12.18.2018
Application of “Loss of Right” in Administrative Litigation of Patent Invalidation
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BY STELLAR J. H. LIN
Based on current administrative litigation procedures of patent invalidation, new evidence for the same revocation request from the petitioner can be allowed to ensure swift proceedings.
According to the provisions of Article 33 of the Intellectual Property Case Adjudication Act, in an administrative action concerning cancellation or revocation of a registered trademark or patent, the Intellectual Property Court shall take into account any new evidence submitted on the same grounds for the cancellation or revocation prior to the end of the oral argument.
Further, according to the provisions of Article 40 of the Intellectual Property Case Adjudication Rules, in an administrative action concerning cancellation or revocation of a registered trademark or patent, the court shall still take into account any new evidence submitted on the same grounds for the cancellation or revocation prior to the end of oral argument, provided the court may, pursuant to Article 132 of the Code of Administrative Procedure applicable mutatis mutandis under Paragraph 2, Article 196 of the Code of Civil Procedure, dismiss new evidence produced, if the conclusion of the action is impeded by the party's attempt to defer the proceeding or its failure, out of gross negligence, to follow the progress of the legal proceeding by presenting new evidence within an appropriate period prior to the end of oral argument. The action of “dismissing new evidence” is also called “loss of right.”
Based on litigation decisions issued by the Intellectual Property Court and the Supreme Administrative Court, the term “an appropriate period prior to the end of oral argument” means in principle “before the end of the preliminary proceeding.”
However, in a patent litigation decision issued on May 31, 2018 (Case No.: 106 Xing Zhuan Geng (1) Zi No. 4), the Intellectual Property Court strictly defined the appropriate period of submitting new evidence. In the administrative litigation procedures for this case, a new combination of evidence submitted five days before the end of the second preliminary proceeding was dismissed. The Intellectual Property Court indicated that the petitioner had known about the new combination of evidence during the patent invalidation proceeding, but the new combination of evidence was not submitted to the First and Second Instances of the administrative litigation. The Intellectual Property Court further indicated that the determination of “an appropriate period of corresponding preparation” shall consider whether the delay in submitting new evidence is due to proper reasons and shall further consider whether the time allowed for searching the newly filed evidence is fair for both parties. Hence, the Intellectual Property Court finally considered that the new combination of evidence submitted by the petitioner was inadmissible.
Based on current administrative litigation procedures of patent invalidation, new evidence for the same revocation request from the petitioner can be allowed to ensure swift proceedings.
According to the provisions of Article 33 of the Intellectual Property Case Adjudication Act, in an administrative action concerning cancellation or revocation of a registered trademark or patent, the Intellectual Property Court shall take into account any new evidence submitted on the same grounds for the cancellation or revocation prior to the end of the oral argument.
Further, according to the provisions of Article 40 of the Intellectual Property Case Adjudication Rules, in an administrative action concerning cancellation or revocation of a registered trademark or patent, the court shall still take into account any new evidence submitted on the same grounds for the cancellation or revocation prior to the end of oral argument, provided the court may, pursuant to Article 132 of the Code of Administrative Procedure applicable mutatis mutandis under Paragraph 2, Article 196 of the Code of Civil Procedure, dismiss new evidence produced, if the conclusion of the action is impeded by the party's attempt to defer the proceeding or its failure, out of gross negligence, to follow the progress of the legal proceeding by presenting new evidence within an appropriate period prior to the end of oral argument. The action of “dismissing new evidence” is also called “loss of right.”
Based on litigation decisions issued by the Intellectual Property Court and the Supreme Administrative Court, the term “an appropriate period prior to the end of oral argument” means in principle “before the end of the preliminary proceeding.”
However, in a patent litigation decision issued on May 31, 2018 (Case No.: 106 Xing Zhuan Geng (1) Zi No. 4), the Intellectual Property Court strictly defined the appropriate period of submitting new evidence. In the administrative litigation procedures for this case, a new combination of evidence submitted five days before the end of the second preliminary proceeding was dismissed. The Intellectual Property Court indicated that the petitioner had known about the new combination of evidence during the patent invalidation proceeding, but the new combination of evidence was not submitted to the First and Second Instances of the administrative litigation. The Intellectual Property Court further indicated that the determination of “an appropriate period of corresponding preparation” shall consider whether the delay in submitting new evidence is due to proper reasons and shall further consider whether the time allowed for searching the newly filed evidence is fair for both parties. Hence, the Intellectual Property Court finally considered that the new combination of evidence submitted by the petitioner was inadmissible.
