Eligibility of private documents as evidence in Taiwan: a case study

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

Eligibility of private documents as evidence in Taiwan: a case study

Sponsored by

saint-island-400px.png
paperwork-1054423_1920.jpg

Ming-Yeh Lin of Saint Island International Patent & Law Offices reports on a Taiwanese Intellectual Property and Commercial Court ruling that has ramifications for whether certain private documents can serve as prior art references

Taiwan’s Intellectual Property and Commercial Court (the IPC Court) has recently overturned decisions rendered by the Intellectual Property Office (the IP Office) and the Board of Appeals in view of the judge’s different points of view regarding the eligibility of the evidence presented by the plaintiff, the petitioner of an invalidation action.

In an invalidation action filed with the IP Office, the petitioner claimed, with exhibits submitted, that the design patent at issue lacked novelty or inventiveness. Exhibit 6 consisted of photocopies of procurement contracts and engineering drawings entered into between the design holder, a third-party company, and their cooperative manufacturers, among others. The IP Office considered the evidence to be private documents and found them insufficient to serve as eligible evidence, especially when no clear dates or facts regarding publication of the documents are shown therein.

The petitioner, disagreeing with this assessment, filed an appeal with the Board of Appeals. The board held that drawings for canopy door pieces in a contract attached to exhibit 6, with cross-reference to the award announcement from the government's procurement website, were sufficient to prove that they were available for download on the government’s website before the filing date of the design patent at issue, and have evidential capacity. Notwithstanding this, it was difficult to conclude that the other contracts had been publicly available before the filing of the design patent at issue. Therefore, the board agreed with the IP Office that the invalidation action was groundless.

The IPC Court’s findings

The petitioner subsequently filed an administrative litigation with the IPC Court. The court found that although the procurement contracts included in exhibit 6 are private documents between the government's successful bidder and its cooperative manufacturers, the drawings for the canopy door pieces attached to the contracts were derived from the government's public tendering projects. These government procurement tender documents were available for download from the government's procurement website and had been publicly accessible before the filing date of the design patent at issue.

Therefore, the court determined that the procurement contracts entered into between the plaintiff, a third-party company, and their cooperative manufacturers included in exhibit 6, with cross-reference to the drawings attached to the contracts and related tender documents from the government’s website, should be sufficient to negate the novelty or creativeness of the patented design. Consequently, the denial of the eligibility of exhibit 6 by the IP Office was unreasonable and unjustified.

Implication of the ruling in the case

The procurement contracts signed between a winning bidder and downstream manufacturers are generally classified as private documents. The above case, however, suggests that if the drawings attached to such procurement contracts can be correlated with any documents or drawings from public government tendering projects, and if the publication dates of these government procurement public tender documents are earlier than the filing date of the patent at issue, then the documents altogether can serve as eligible prior art references.

more from across site and SHARED ros bottom lb

More from across our site

Moore & Van Allen hires former Teva counsel Larry Rickles to help expand the firm’s life sciences capabilities
Canadian law firms should avoid ‘tunnel vision’ as exclusive survey reveals client dissatisfaction with risk management advice and value-added services
In major recent developments, the CoA ruled on director liability for patent infringement, and Nokia targeted Paramount at the UPC and in Germany
Niri Shan, the newly appointed head of IP for UK, Ireland and the Middle East, explains why the firm’s international setup has brought UPC success, and addresses German partner departures
Vlad Stanese joins our ‘Five minutes with’ series to discuss potentially precedent-setting trademark and copyright cases and his love for aviation
Heath Hoglund, president of Via LA, discusses how it sets royalty rates and its plans to build on growth in China
Stobbs stands accused of interfering with the administration of justice after Brandsmiths’ client was subjected to an interim injunction for unjustified threats
The firm, known for its prosecution expertise, discusses its plans following the appointment of a UK-based patent litigation head and two new partners
Ed White at Clarivate provides an exclusive insight into the innovation power clusters reshaping Europe and the Middle East’s IP landscape, and why quality is the new currency of invention
In the first in a new podcast series celebrating the tenth anniversary of IP Inclusive, we look back at the network’s origins and discuss its mission
Gift this article