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 anex 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|
Saint Island International Patent & Law OfficesTaipei
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