Introduction: there are the following two subschemes where a correction petition can be accepted.

Subscheme A: During the administrative remedy against an invalidation case, in each case where a subsequent correction will influence or change the basis on which the original decision was made (for example, a correction to a claim in the sentence of the subject of the formal decision, no matter whether the invalidation is dismissed or not), the correction will not be accepted.  On the contrary, if the correction will not influence or change the basis on which the decision was made (for example, a correction is made to a claim not in the sentence in the subject of the formal decision and will not affect the construction of the claim(s) in the sentence), the correction will be accepted.

Subscheme B: In principle, it is the same as Subscheme A.  However, a subsequent correction petition can be exceptionally accepted, if, in the sentence in the original decision in each invalidation case during an administrative remedy, the invalidation of each claim is dismissed.

Reasons for Subscheme A

In the new system, claims can be partially invalidated, and the claims not invalidated might not be related to the invalidation case (for example, the patent includes article claims and method claims, but, in the invalidation case, only the invalidation of the article claims is requested).  Or, if the invalidation reasons in an earlier invalidation case for the article claims are completely different from those in a later invalidation case for the method claims, after an administrative remedy is filed for the earlier invalidation case for which a formal decision is made, it will actually be unnecessary to deny a correction to be made and not related to the basis on which the formal decision was made, so as to not only avoid an influence on the basis, but also attend to the patentee¡¦s right of making the correction.

Reasons for Subscheme B

According to the current practices, during the administrative remedy against the decision where the invalidation is dismissed, even if the correction might affect or change the basis according to which the decision at issue was made, the correction petition to be made by the patentee can be exceptionally accepted.  Therefore, to be aligned with the current practices, the correction petition can be exceptionally accepted, if the sentence in the subject in the decision is that the invalidation is fully dismissed

Advantages and disadvantages

Advantages for Subscheme A:

1. After a subsequent correction petition is filed during the administrative remedy against an invalidation case according to this subscheme, if the correction is accepted, although the corrected version to be issued will be different from the original version according to which the formal decision was made for the invalidation case during the administrative remedy, the basis according to which the formal decision was made is not changed.  Therefore, there will not be an influence on determining whether the formal decision should be revoked.  Thus, the higher authority still can determine whether the decision should be revoked or not according to the original claims based on which the decision was made without the possibility of considering the corrected version to thus revoke the decision and remand the invalidation case.  Accordingly, the stability of the claims based on which the formal decision was made for the invalidation case for which the administrative remedy is filed can be maintained.

2. If the requester for the invalidation case submits new evidence according to the stipulations in Article 33 of the Intellectual Property Case Adjudication Act during the administrative remedy, so that different examining opinions than the formal decision are provided to revoke the decision and thus remand the invalidation case, the Office, when reexamining this case, will allow a chance to make a further correction for further prosecution.  Therefore, the benefits to and rights of the correction petitioner will not be affected.

3. Furthermore, a later invalidation case can be examined based on a corrected version, and thus the prosecution therefor will not be delayed.

Disadvantages for Subscheme A:

1. The rights of the patentee to make a correction will be partially limited, so as to maintain the stability of the  basis according to which the examination for the invalidation case was made during the administrative remedy.

Advantages for Subscheme B:

1. In addition to the advantages for Subscheme A, further rights of and benefits to the patentee are enhanced.  That is, the correction petition can be also exceptionally accepted, if each sentence in the subject in the decision is that the invalidation is dismissed.