@

Newsletters

Deep & Far Newsletter 2015 ©
Jul, 201
5

PENDING ISSUES REGARDING CORRECTIONS TO BE MADE AGAINST INVALIDATION-PART III

Wei-Ting Chou, Patent Director, Patent Group I

 Master of Agricultural Engineering, National Taiwan University

 Bachelor of Medical Engineering, National Cheng Kung University

@

4.2 Scheme (B) that there is no room for acceptance:

Introduction: any correction petition submitted during the administrative remedy against an invalidation will not be accepted.

Reasons for no acceptance

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.

Advantages and disadvantages

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.

Practicability

1. This scheme that the correction petition to be submitted during the administrative remedy against the invalidation case cannot be accepted requires consent from and the support of the public.

2. The subsequent invalidation case should be examined according to the original publication text.

  

@