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3. Currently, there are the following three opinions regarding
whether a petition for a correction during the administrative remedy against an
invalidation case should be accepted: (1) the petition should be accepted,
(2) the petition should not be accepted, and (3) a compromise approach. No matter which opinion is adopted, it
is hard to find a balance between legal and practical sides because each opinion
has its own advantages and disadvantages. According to the three opinions above,
three applicable schemes (A), (B) and (C) are analyzed as follows:
(A) Acceptance
in any circumstance: In other
words, during the administrative remedy against the validation decision, no
matter whether the correction is submitted in response to another invalidation
or independently, the correction can be accepted.
(B) No
acceptance in any circumstance:
In other words, any correction submitted during the administrative
remedy against an invalidation decision should not be accepted.
(C) Acceptance
depending on certain circumstance:
In this regard, there are the following two sub-schemes.
(C).1 If the
correction petition is submitted during the administrative appeal against an
invalidation decision, and the correction can affect the basis on which the
decision is made, the petition will not be accepted. However, if there is no such effect,
the petition can be accepted. The
effect can be a direct or indirect effect.
(C).2
Sub-scheme (c).1 applies mutatis mutandis except that the subject content of
the invalidation decision is that the invalidation is wholly dismissed.
4. Results of
analyzing the schemes:
4.1 Scheme (A)
that there is acceptance in each circumstance:
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Introduction: the correction petition submitted during the
administrative appeal against the invalidation decision can be accepted, no
matter whether the correction is to be made in response to another
invalidation or independently.
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Reasons for the acceptance
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A citizen has rights to make the correction. Furthermore, in the Patent Law,
there is no explicit limitation regarding when the correction petition
should be submitted. Therefore,
if an executive order is made to limit whether the correction petition can
be accepted, there might be issues of violating the principle of law
clarity and definiteness and the principle of law reservation. Accordingly,
the correction petition submitted during the administrative appeal against
the invalidation decision should be accepted, so as to avoid a dispute.
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Advantages and disadvantages
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Advantage:
The patentee’s rights to make the correction can be protected.
Disadvantages:
1. If the correction petition submitted during the
administrative appeal against the invalidation decision is accepted, the
correction will be retroactively effective from the filing date, and thus
the decision basis of deciding the invalidation will be changed. Therefore, the higher authorities
will revoke and remand the decision without making a substantive
examination, and order that a reexamination should be made according to the
newly issued claims.
Accordingly, the legal stability cannot be maintained. In addition, if the patentee
repeatedly makes corrections as a defense, the prosecution will be
adversely prolonged, and thus there will be wastage of litigation resource.
2. After it is decided that there are one or more claims
irrevocably invalidated in a preceding invalidation case, a substantive
binding effect for revocation thereof will be generated. Therefore, even if the correction
petition is accepted, a decision therefor cannot be made, and thus the
protecting scope of the one or more claims will not be changed.
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Practicability
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1. During the administrative appeal against the preceding
invalidation decision, if there is an independent correction petition or a
correction petition in response to a subsequent invalidation case, the
independent correction or both the subsequent invalidation case and the
correction petition therefor will be deferred until the administrative
appeal decision is made, so as to avoid the change of the decision basis of
the original invalidation decision.
2. According to the above, if there are multiple invalidation
cases, the subsequent independent correction petition or both the
subsequent invalidation case and the subsequent correction petition
therefor will be deferred.
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