The role of the IP Court in patent invalidation

If the IPC finds some or all of the claims invalid based on the newly submitted exhibit(s), the court has discretion to either (i) remand the case to the TIPO for a decision on reopened invalidation proceedings, during which the patentee may submit post-grant claim amendments for overcoming the newly cited exhibit(s); or (ii) demand that the TIPO issues a decision rejecting the claims based on the IPC’s findings where no amendment from the patentee will be admissible. The IPC’s choice therefore affects the patentee’s ability to keep the patent alive.

Most of the IPC’s judgments before 2013 demonstrate the court’s tendency for option (i). For instance, in one case the IPC held that the patentee may amend the claims when the case was remanded to and pending at the TIPO. The TIPO may render a different decision based on the amendments.

In another case, the IPC held that the patentee was not able to counter the new evidence in a timely manner because the new evidence was not presented until the IPC’s appellate level. The court therefore remanded the case to the TIPO and stated that the patentee should be offered an opportunity for amendments, known as the ‘procedural interest’.

A moving attitude

However, the IPC’s attitude has been gradually shifting towards (ii); since 2014 it has been asking the TIPO to issue a rejection decision on the claims. For instance, one IPC judgment was entered to invalidate the claims because the patentability of all the claims had already been analysed, leaving the TIPO with no more facts to investigate, and because the patentee had also expressly waived the entitlement to make amendments during the trial.