In an attempt to improve examination efficiency, the amended Patent Act which took effect from November 1 2019 now prescribes tight time limits for the invalidation petitioner to file additional reasons and evidence after filing an invalidation action and the patentee to file a counter-statement or a claim amendment. This will inevitably affect the strategies that the two opposing parties may use during the proceedings of an invalidation action.
According to the amended Patent Act, supplementary reasons or evidential materials can be submitted to the IP office only within three months from the filing date of an invalidation action. The legal rationale underlying this amendment is to prohibit the invalidation petitioner from intentionally prolonging the process of an invalidation action by submitting supplementary reasons or evidence in an exhaustive manner. By the same token, the patentee is given a one-month time limit to file a counter-statement against an invalidation action, along with a post-grant amendment, if any. This one month time limit also applies when (i) the invalidation petitioner is invited by the IP office to submit his comments on a post-grant amendment as filed; and (ii) either of the opposing parties is invited to render his opinion so as to remove any of the doubts raised by the IP office regarding the reasons or evidence on file. Time extensions are available only if they are accompanied by justifiable reasons and are subject to the approval of the IP office.
The amended Patent Act also mandates that the patentee is allowed to file post-grant amendments only within the one-month time limit prescribed to submit the counter-statement, or upon receipt of a notification from the IP office that the claim amendment filed with the counter-statement has been rejected, unless the patent at issue is the subject of a merit lawsuit.
In view of the time limits prescribed in the amended Patent Act, both the invalidation petitioner and the patentee are placed under a tight schedule and time pressure. Consequently, it is possible that an invalidation petitioner may not have a chance to submit his comments on the counter-statement filed by the patentee and a patentee may need to consider whether to conduct "claim amendments" as a counter-measure at a very early stage in an invalidation action. In other words, either party may be pushed to lay all their cards on the table in one go so as to increase the chances of success.
However, if viewed from another perspective, it seems that there is still room for the two opposing parties to map out their winning strategies under the severe atmosphere of a one-off showdown. For instance, the process of an invalidation action can be dragged on by requesting interviews or oral hearings, not to mention that the invalidation petitioner is allowed to file multiple invalidation actions so long as the "res judicata" doctrine is observed. Therefore, it is worth observing closely how invalidation cases will play out under the tight time limits imposed by the new amended Patent Act.
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