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In the past, the civil court responsible for the trial of patent infringement did not have the power to determine the validity of a patent; it must respect the decision of the competent patent authority. Hence, in the event of a patent invalidation action, the court could only rule to suspend the proceeding and wait for the decision of the competent patent authority. Consequently, the disputes were stayed for quite a long time and it was unfavorable for patent holders to exercise their rights. Hence, in the Intellectual Property Case Adjudication Act, which came into effect on 1 July 2008, it is expressly stipulated that when a litigant counterpleads that the disputed patent shall be revoked (i.e. the patent is invalid), the civil court must make the decision on its own and cannot suspend the proceeding. The civil court's decision about the validity of the patent is effective only between the litigants and does not directly make the patent invalid.
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However, when the defendant of an infringement lawsuit raises the defense of patent validity, the plaintiff, in addition to replying by providing technical and legal statements, sometimes also has to introduce certain amendments to the claims so as to overcome the defendant's attack against the validity, such as reducing the scope, correcting errors, or explaining unclear descriptions. In other words, the result of the amendment shall have influence on the court's judgment about patent validity. Nevertheless, whether the plaintiff's application for claim amendment should be approved is still within the discretion of the competent patent authority (i.e. the Taiwan Intellectual Property Office, TIPO). Although the Intellectual Property Case Adjudication Act grants the civil court the power to judge patent validity on its own, the Act is silent about how to handle the application of claim amendment. Consequently, when the plaintiff asserts amendments on his patent claims during the trial proceedings, the matter of how the civil court should deal with the situation before the TIPO renders a decision on the plaintiff's application for amendment indeed becomes a problem.
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Article 32 of the Intellectual Property Case Adjudication Rules reads, "Where a litigant to a civil action of patent infringement claims or defends that the patent right shall be revoked, and where the patent holder has applied to the competent intellectual property authority for claim amendment, the court shall take into account the progress of the authority's examination of the amendment application, consult with both parties, and then designate an appropriate date of a court session, except for the situation where the trial can directly proceed because the amendment is obviously inadmissible or there becomes no infringement on the basis of the amended claims." It seems that the civil court may "proceed with the trial directly" only when "the amendment is obviously inadmissible" or "there becomes no infringement on the basis of the amended claims." However, considering the legislative objective of the Intellectual Property Case Adjudication Act, and the fact that the civil court has been granted the privilege to judge patent validity, the aforementioned rules shall be interpreted as "exemplary" rules. In other words, if the civil court believes that "the application of claim amendment obviously shall be approved," it can of course proceed with the trial. Nevertheless, what situations could be regarded as "obviously shall be approved"? When the court determines "whether the application shall be approved," should it conduct a comprehensive substantive examination on the content of the plaintiff's amendment? Or should it make judgment on its own only if the approvability is so clear in light of the formality of the amendment? To clarify such issues, it is necessary to rely on the Intellectual Property Court to establish a guideline through judgments on individual cases.
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Nevertheless, it seems that since its establishment on 1 July 2008, the Intellectual Property Court still has no consistent way to deal with the application of patent claim amendment; there are judges with a conservative attitude and also some with a positive and aggressive attitude. By observing recent judgments, their approaches can be categorized as follows:
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Holding that the court has no need to determine whether the amendment should be approved
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Adjudications having this opinion include, for example, Judgment Nos. 2009-MinZhuanShang-42 and 2009-MinZhuanShang-45 (Date of judgment: both 10 June 2010), etc. While they clearly indicated that "the court does not need to consider the application of claim amendment and can make the judgment of the principal case directly," in fact, they all made the aforementioned conclusion after comparing both the original claims and the amended claims with the prior art citations raised by the defendants and deciding that both the original and the amended claims were invalid.
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Making no determination about whether the amendment shall be approved
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Adjudication taking this approach includes, for example Judgment No. 2011-MinZhuanShang-14 (Date of judgment: 29 February 2012).
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This judgment did not say anything about whether the court should make judgment about the claim amendment on its own, nor did it discuss the substantial content of the amendment. However, the court compared the defendant's product with the patent claims before and after amendment, and determined that the concerned product did not constitute infringement on either version of the claims.
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Making no judgment on claim amendment but obtaining the parties' consent
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Adjudications taking this direction include, for example, Judgment Nos. 2011-MinZhuanSu-93 (Date of judgment: 26 July 2012), 2011-MinZhuanShang-2 (Date of judgment: May 31, 2012), 2011-MinZhuanShangYi-31 (Date of judgment: 5 April 2012) and 2010-MinZhuanShang-75 (Date of judgment: 29 March 2012), etc.
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Through mutual agreement of the parties, the court can easily decide which version of claims (before or after amendment) shall be served as the basis for judgment, and does not need to explore the interpretation and application of the aforementioned Article 32 of the Intellectual Property Case Adjudication Rules, or to review and deal with the legitimacy of the claim amendment. Further, the disputes between litigants in this respect could be decreased as well. However, no matter which version of claims (before or after amendment) is mutually agreed on by the parties, it does not mean that the amendment should or should not be approved. Since the court does not conduct a substantial examination on the amendment, it is more likely that the claims employed by the court, as the basis for judgment, would be inconsistent with the final version approved by the TIPO.
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Holding that basically the court shall not make judgment on claim amendment unless the amendment is obviously acceptable
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Adjudication having this opinion includes, for example, Judgment No. 2011-MinZhuanSu-49 (Date of judgment: 20 March 2012).
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It firstly explained its standing that "In respect of whether the application of amendment should be approved, it is the mandate of the competent patent authority and the court has no way to make judgment," and then referred to the provision of aforementioned Article 32 of the Intellectual Property Case Adjudication Rules, expressing that "where the content of amendment is obviously approvable, the civil court may determine the validity of the patent on its own." In this case, the plaintiff simply deleted three claims from the original four claims and changed the sequence of the remaining one, which is an "obviously approvable amendment;" the court then used the claim after amendment as the basis to determine the validity issue. It seems that the aforementioned judgment considered that the court may make determination only when the amendment is "obviously approvable in light of the formality."
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Deciding on its own that the amendment shall be approved and obtaining the defendant's consent as well
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Adjudications of this type include, for example, Judgment Nos. 2011-MinZhuanSu-128 (Date of judgment: 25 July 2012) and 2011-MinZhuanShang-18 (Date of judgment: January 12, 2012), etc.
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In these judgments, besides explaining in detail the reasons why the court considered that the amendment shall be approved, the defendants' consent to use the claims after amendment as the basis for judgment.
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Deciding on its own that amendment shall be approved
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Adjudication having this opinion include, for example, Judgment Nos. 2011-MinZhuanSu-61 (Date of judgment: June 28, 2012) and 2011-MinZhuanSu-60 (Date of judgment: 7 September 2012), etc.
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The court thoroughly explored the plaintiff's and the defendants' claims about the amendment of the patent claims, expounded the reasons why it determined that the plaintiff's amendment complied with the provisions of the patent laws, and finally used the claims after amendment as the basis of judgment; the court reached the conclusion of infringement in both of these cases. It appears that in these judgments the court took a more positive attitude about the amendment issue and conducted a comprehensive investigation and judgment on attacks and defenses of the parties, rather than seeking the defendant's agreement to use the claims after amendment.
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In sum, the Intellectual Property Court has not yet established a common principle about how to handle the application of claim amendment filed by the plaintiff. It seems that the Court tends to allow judges to make a judgment case by case according to their mandate and their own evaluation of the evidence. As such, it provides litigants some room to choose suitable procedures, and also reserves opportunities for litigants to swiftly apply different strategies of argumentation.
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