When granted with a patent right, the patentee may file a request for amending the description, claim(s) or drawing(s) of the granted patent.  Hence, once an alleged infringer has presented prior evidence sufficient to establish that the patent at issue lacks patentability in a patent infringement litigation case, the patentee is likely to file post-grant amendment requests with the Taiwan Intellectual Property Office during the litigation proceedings in order to overcome the defects in the validity of the patent at issue.  At this point, pursuant to Article 32 of the Intellectual Property Case Adjudication Rules, “trial and adjudication of the principal case may directly proceed if the amendment application obviously shall not be granted or if the amended scope of claim(s), once approved, does not constitute an infringement of right.”

However, when the patentee requests the court to adjudicate the case according to the amended patent claim(s), different judicial opinions arise on whether this may constitute an amendment of a litigation claim as defined in the Taiwan Code of Civil Procedure or whether this is simply a supplement to the means of attack or defense.  The real benefit lies in the difference of the applicable provisions and standards for determining legality.  Once the amendment of a litigation claim is determined, pursuant to the stipulations in the Taiwan Code of Civil Procedure, after the service of the complaint, amendment of a litigation claim may not be allowed in principle, except in the case where the opposing party agrees, or in certain circumstances defined by the Act (such as the circumstance where the amendment of the claim is based on the same occurrence, or which is merely an expansion or reduction of a litigation claim).  Moreover, only the amended litigation claim shall be reviewed by the court; the original claim shall be extinguished.

Certain judicial opinions hold that a post-grant amendment of the claim(s) will inevitably lead to a substantial change in the basic facts on which the court’s judgment is based, and thus shall be deemed as an amendment of a litigation claim, since each claim of the patent can serve as an independent basis for the assertion as well as for decisions of patent validity, infringement judgments and damage calculations. The above is the very opinion adopted by the civil judgments of the 2015 Min Zhuan Shang Geng (1) No. 7, 2012 Min Zhuan Shang No. 28 and 2010 Min Zhuan Shang No. 12 rendered by the Taiwan Intellectual Property Court, and recognized by the civil judgments of the 2015 Tai Shang No. 1651 and 2017 Tai Shang No. 391 rendered by the Supreme Court as well.

Nevertheless, according to other judicial opinions, when the patentee’s post-grant amendment of patent claim(s) meets legal essentials, the amendment still falls within the original scope of patent claim(s) since the amendment has to do with the deletion of claim(s), the narrowing of claim(s) scope, and error correction, namely a mere supplement to the means of attack or defense. It’s not an amendment to the litigation claim.  The foregoing opinion was reiterated in the 2019 Tai Shang No. 2129 civil judgment rendered by the Supreme Court dated June 13, 2020.

Furthermore, according to the 2019 Tai Shang No. 2129 civil judgment rendered by the Supreme Court, the reason why it held a different opinion from that of the foregoing 2015 Tai Shang No. 1651 civil judgment was due to the different determination rendered in the original instance.  It can be seen that the Supreme Court adjudicates the legality based on the determination rendered in the original instance.  Once the original instance determines that an amendment of a litigation claim is established, the Supreme Court will take into consideration whether the judgment of the original instance meets the stipulations on an amendment of the claim.  For example, in the 2015 Tai Shang No. 1651 civil judgment, the Supreme Court held that a violation of law was established because what was being adjudicated in the original instance was not the amended claim, but rather the original yet invalid claim.  In contrast, once a supplement to the means of attack or defense is determined in the original instance, the Supreme Court will render its judgment on top of that accordingly.