IP Court judges are required to review defendants' defences to patent infringement lawsuits, including counter-claims for patent invalidity. The IP Court, therefore, provides a second track for an accused infringer to challenge the validity of the patent, in addition to the invalidation track offered by the Taiwan Intellectual Property Office (TIPO), making it no longer an option for a judge to stay a lawsuit pending the outcome of a parallel invalidation action. Although a judge's decision on a patent validity issue is binding to the parties of the lawsuit only, it is rare that a patentee will prevail in a patent infringement suit if the patent has been declared unpatentable by the IP Court in a previous proceeding.
IP Court judges and TIPO examiners, in a conference in 2010, agreed that any earlier decision made by the other should be respected. This agreement, however, is rarely relevant given that in most cases the IP Court's rulings precede those of TIPO. The already substantial influence of the IP Court's rulings over TIPO is further enhanced by the fact that all TIPO's decisions in invalidation actions are ultimately appealable to the IP Court. The IP Court has therefore become a more important forum than TIPO on patent validity and accused infringers defer filing invalidation actions if they believe they have prior art capable of defeating the validity of a patent in dispute before the IP Court.
Based on TIPO's 2011 Annual Report and Third Quarter Report 2012, invalidation actions have decreased since the establishment of the IP Court in 2008. While there were 1034 filed in 2008, the number had dropped to 792 by 2011. As a further indication of the IP Court's influence, patentees' win rate at TIPO dropped to below 50% in 2009, and was 46.9% in 2012 (as of September), although some analysts attribute the drop to the stringent criteria implemented by TIPO in examining patentability.
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Tony Tung-Yang Chang |
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
