The judicial branch of Taiwan has published two sets of rules drafted to clarify Article 38 of the Act of Trial Procedures in IP Dispute Cases promulgated on March 28 2007. One is the Enforcement Rules of the Act and the other provides guidelines for trial.

Having reviewed the two drafts, I am of the opinion that the following issues may require further discussion for avoidance of any possible confusion in future IP disputes.

First, under applicable laws at present, whenever an invalidation proceeding is initiated by the defendant in an infringement action against the complainant's IP rights before the Intellectual Property Office, the court may suspend its trial procedure until a conclusive decision has been rendered by the Intellectual Property Office on the invalidation proceeding. However, after the IP Court has been established and the Act of Trial Procedures in IP Dispute Cases has been implemented, the IP Court shall be obliged to determine whether the IP rights, which are the subject of a trial, are valid or not. The question arises of how to deal with the infringement actions already put on hold before implementation of the Act. According to the draft Enforcement Rules, the matter is at the discretion of the IP Court, whereas it is set out in the brief description of the draft Enforcement Rules that the trial of such actions should be resumed. Obviously, such inconsistency needs to be rectified to avoid confusion.

Pursuant to Article 29 of the draft trial rules, no parties in an IP infringement action are allowed to file an independent cause of action, or a counter-claim based solely upon the issue of validity of the alleged IP rights. This stipulation, if literally construed, would enjoin a defendant in an infringement action from filing a motion for declaratory judgment of non-infringement or a counter-claim by merely asserting invalidity of the IP rights claimed by the complainant.

The third issue stems from statutory silence in the trial rules as to whether the presiding judge should, before deciding on the amount of damages, render a binding ruling on an infringement action or only be allowed to convey orally to the parties concerned during court sessions their non-binding decision.

As the rules are still in their draft stages, it remains to be seen whether or not the above issues will be addressed or rectified.

Sumin Lai

Saint Island International Patent & Law Offices
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