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Taiwan: Evidence verification between Taiwan and China

Eminent Luggage Corporation, a renowned Taiwan-based company engaged in the design and manufacturing of luggage cases, filed a civil patent infringement lawsuit with Taiwan's IP Court against an infringer. In the lawsuit, the defendant challenged the validity of the design patent, arguing that another brand of luggage case manufactured in China had already adopted the very same trunk panel design prior to its filing date.

To support these arguments, the defendant submitted to the IP Court a copy of a tooling agreement entered into between the manufacturer of the other brand of luggage case and a Shanghai-based tooling factory prior to the filing date of the design patent being enforced. Drawings that clearly illustrate the design of the truck panel manufactured in China were attached as an exhibit to the agreement. There was also a document submitted showing shipment from China to Japan of luggage cases manufactured based on the tooling agreement. Above all, the legal representative of the China-based manufacturer of the luggage case was subpoenaed as a witness for the defence.

In the first and second instances, the IP Court rendered rulings in favour of the defendant, holding that the novelty of the design patent had been destroyed by the evidence submitted by the defendant. However, after Eminent Luggage filed an appeal with the Supreme Court, the rulings were rescinded. The Supreme Court opined that it was inappropriate of the IP Court not to give weight to the results of the two in-depth investigations that the People's Court in the Shanghai District conducted under the order of the Supreme People's Court of China, which showed that the evidence submitted by the defendant was false.

Since Taiwan and China signed a Mutual Legal Assistance agreement in April 2009 to work together in judicial matters, which range from extradition and service of documents to evidence investigation and verification, the two sides have established a systematic working relationship and achieved significant efficiency. By the end of 2016, there have already been around 2000 requests for investigation and verification of evidence. More importantly, the opinion of the Supreme Court rendered in the Eminent Luggage case confirmed that the evidence obtained through Mutual Legal Assistance between Taiwan and China can serve as probative evidence before the courts in Taiwan.

Sumin Lai

Saint Island International Patent & Law Offices

7th Floor, No. 248, Section 3

Nanking East Road

Taipei 105-45, Taiwan, ROC

Tel: +886 2 2775 1823

Fax: +886 2 2731 6377

siiplo@mail.saint-island.com.tw

www.saint-island.com.tw

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