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Reasons for no acceptance
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In the system where a claim can be separately invalidated and
thus a separate decision can be made as introduced in the new Patent Law,
there may be a decision that partial claims are invalidated and partial
claims are not invalidated.
Furthermore, a corresponding administrative appeal can be filed
against either of the partial two decisions, and thus the subsequent
prosecution during the administrative remedy will be complicated. Therefore, in order for the
stability of the claims prosecuted during the administrative remedy, it is
necessary to, with reference to the related foreign legislation (e.g. in
Japan, or Korea), stipulate that the correction petition submitted during
the administrative remedy against the invalidation cannot be accepted, so
as to maintain the stability of the legal system.
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Advantages and disadvantages
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Advantages:
1. The complications in the subsequent prosecution during the
administrative remedy can be avoided.
2. The stability of the claims prosecuted during the
administrative remedy can be maintained.
Disadvantages:
1. If the patentee can benefit from the correction petitioned
during the subsequent invalidation or for the civil infringement action,
the benefit might be damaged because the current invalidation case is
subject to the administrative remedy.
2. According to the present Examination Guidelines and litigation
practices: if the invalidation is decided, the correction petition to be
submitted during the administrative remedy against the invalidation will
not be accepted because the correction might influence the basis on which
the decision is made, but there is an exception that the correction petition
submitted during the administrative remedy against the decision that the
invalidation is dismissed will still be accepted. Therefore, if it is stipulated that
the correction petition during the administrative remedy against either of
the two partial decisions above cannot be accepted, this will reflect more
strictness than the current practices.
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