The First Series
of Patent Invalidation Hearings Held in Taiwan
On July 27, 2018, TIPO held the first oral hearing for invalidation proceedings under the new invalidation mechanism. As of the end of November 2018, eleven (11) hearings have been held. The period ending in November was a trial period which TIPO designed to test the mechanism and solicit feedback so as to finalize a complete invalidation hearing framework. According to the Administrative Procedural Act, a hearing is an official proceeding that enables a competent authority to collect information and unveil the details of a given case. Through cross examination and both parties’ statements, a hearing will assist a TIPO examiner to come to a conclusion more efficiently. As a policy goal, TIPO introduced the hearing mechanism in the hopes that it would minimize unwanted flaws in the course of its decision-making. Standing out from other competing firms, Tsai, Lee & Chen participated in one of the eleven cases.
A hearing is a procedural alternative to administrative appeals. A party wishing to challenge TIPO’s decision on an invalidation dispute is not required to file an administrative appeal. If, upon the rendering of a decision after a hearing, either party is not satisfied with TIPO’s decision, then either party may directly file a lawsuit to the IP Court as the next remedy. A hearing is overseen by a panel of three examiners, one of whom presides over the proceeding. The other participants in hearings are the disputing parties, solicitors (attorney-at-law, patent attorneys, or patent agents), as well as any lay witnesses and expert witnesses. The payment of fees is not required for a hearing to be held.
A review of the cases heard during the trial period shows that both the parties requesting invalidation and the patentees were by and large active participants in the hearings. Out of the eleven (11) cases, in four (4) cases the requesting parties refused to attend the hearing whereas in only one (1) case the patentee refused. Eventually, in ten (10) out of the eleven (11) cases, the requesting parties were present whereas the number of cases in which the patentees were present was nine (9).
TIPO selected cases for hearings based on several factors. Whether there were “disputes over facts” and “co-pendency of civil litigation” were two major factors of the merit that TIPO gave greater consideration to when choosing a case. Of the eleven (11) cases heard during the trial period, seven (7) involved disputes of facts and four (4) involved co-pendency of civil litigation (mostly patent infringement). Other factors TIPO believe merited a case to be heard included the importance to industrial development, co-pendency of parallel invalidation actions, interpretation of the law, and that the case was a re-examination of a revoked and remanded invalidity decision. On the other hand, TIPO indicated that it would refuse to hear cases which were dropped by the patentee or if there was a court order requiring TIPO to make a specific decision.
After the conclusion of the trial period, one of two conditions had to be met in order for a hearing to proceed, one of which was already in place during the trial period. The one already in place is that TIPO requires a hearing to take place in order to clarify pending issues. The other condition is that both the party requesting invalidation and the patentee mutually agree to a hearing. But in the latter scenario, TIPO reserves the right to reject the request if the case is without merit or the facts are already clear.
Tsai, Lee & Chen’s efforts were met with success in their first hearing as their client won by revoking patentee’s all ten (10) claims in their case. The claims were deemed invalid due to lack of inventiveness, a view which was supported by a large body of evidence. The outcome of this hearing is not only an achievement for the firm, but also of historical significance as these hearings make an important milestone in Taiwan’s IP law development.
for any questions relating to this topic, please contact us at cjchen@tsailee.com.tw |