Taiwan: TIPO introduces new oral hearing system for patent invalidation actions
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Taiwan: TIPO introduces new oral hearing system for patent invalidation actions

It has been a longstanding practice in Taiwan for patent invalidation actions to be examined in written form and conducted using a pleading-and-defence template in which the two opposing parties are allowed to alternately present their contentions in writing. Taiwan's IP Office (hereinafter referred to as TIPO), upon receipt of the brief/counterstatement lodged by either party, will serve a copy on the other party, along with a notification for filing a response. After the two parties have exhausted their views and have no new evidence to file or TIPO believes that the observations and evidence submitted are sufficient, TIPO will proceed to examine all the documents/materials on file. Under this practice, none of the documents/materials on file can be divulged to the public, and the examination process could be rather lengthy.

After TIPO renders a decision on an invalidation action, either of the parties, if dissatisfied with the decision, can file an appeal with the Board of Appeals. A party not satisfied with the decision rendered by the Board of Appeals needs to file a petition for administrative litigation with the IP court, and, if intended, a further appeal with the Supreme Administrative Court.

Recently, in an attempt to speed up the examination process, and to make patent invalidation cases transparent and open to the public, TIPO has shown an inclination to introduce an oral hearing system into invalidation cases. It published on March 30 this year, a "Guideline on the Hearing System for Patent Invalidation Cases" based on the regulations set out in the Administrative Procedure Act relating to the holding of oral hearings by administrative authorities.

Unlike the past examination procedure under which only the opposing and interested parties can gain access to the documents/materials on file, oral hearings are basically held publicly. Additionally, according to the new system, if either of the opposing parties is dissatisfied with the decision that TIPO renders after holding an oral hearings(s), he/she can bypass the appellate procedure and directly file a petition for administrative litigation with the IP court.

In general, TIPO can initiate the holding of an ex officio oral hearing if a case is more intricate or there are a few substantial issues that need to be addressed in the presence of the two opposing parties.

Either of the opposing parties in an invalidation action is allowed to file a request for an oral hearing. The request, however, must be approved by TIPO and there should be no objection from the other party. If the IP Office does not entertain the request, it must inform the party filing the request about the reasons for disapproval.

Since the results of an oral hearing may have a significant influence on the opposing parties in an invalidation action, TIPO is obliged to inform them about the hearing to be scheduled. Either of the parties is also allowed to object to the holding of an ex officio oral hearing with submission of reasons for the objection. TIPO will then weigh the reasons to make a decision as to whether or not a hearing will be held as originally intended. In principle, if a party has expressed objection and yet failed to present reasons or justifiable reasons for support of his/her objection, the hearing can be held as scheduled even in the event of default of the objecting party.

fiona-cc-yin.jpg

Fiona CC Yin


Saint Island International Patent & Law OfficesTaipei

more from across site and ros bottom lb

More from across our site

Lawyers in the corporate and IP practices discuss where the firm can steal a march on competitors, its growth plans in London, and why deal lawyers are ‘concertmasters’
Kathleen Gaynor, DEI specialist at Phillips Ormonde Fitzpatrick, says deliberate actions can help law firms reach diversity goals
Scott McKeown, who moved to Wolf Greenfield one year ago, says the change has helped him tap into life sciences work and advise more patent owners
The winners of our Asia-Pacific Awards 2024 will be revealed during a ceremony in Malaysia on September 26
Zach Piccolomini of Wolf Greenfield explains how to maximise your IP portfolio’s value while keeping an eye on competitors
Witnesses at a Congressional hearing debated whether reforming the ITC is necessary and considered what any changes should look like
In the first of a two-part UPC special, lawyers at A&O Shearman explain what you need to know about changes of procedural language and security for costs
Lawyers in the US and Europe reveal the work they focus on, how they stay one step ahead of creative counterfeiters, and why reputation matters
Abion said the appointment of Silvia Asioli and the launch of its Milan office will expand its market position in southern Europe
UK firms who have hired litigation and transactional lawyers reveal how they work together and the lessons have they learned
Gift this article