25 March 2021
To make Taiwan’s patent dispute system more similar to its counterparts in many other jurisdictions, such as Germany, Japan, Korea, and the United States, and to help parties find a timely remedy by shortening the entire patent dispute proceedings, in December 2020, the Taiwan Intellectual Property Office (TIPO) recommended amending the Patent Act. If the legislature passes such amendments, a new reviewing body titled “the Patent and Trademark Reconsideration and Disputes Review Board” (the “review board”) will have authority to hear and investigate patent invalidation proceedings, in which a party challenges the validity of a given patent. The review board will have jurisdiction over most other patent- related cases, as well as trademark-related cases. In most cases, there will be three members sitting on the review board.
Currently, TIPO is collecting public comments on the proposal.
“Under the proposed amendments, any party who would like to challenge the outcome of a ruling rendered by the review board (the “challenging party”) may directly bring the same matter before Taiwan’s Intellectual Property Court (the “IP Court”), a judicial body that exclusively hears IP-related matters,” says Brian Hsieh, a partner at Formosa Transnational. “In other words, the “challenging party” may skip the administrative appeal proceeding which shall be filed with the administrative appeal committee, under the current practice.” This will shorten the entire patent dispute proceedings.
Another significant reform that the new changes would make to Taiwan's patent regime is that TIPO or members of the review board would not be required to engage in legal cases and to uphold the review board's decision if a challenging party requests the IP Court to overturn a ruling of the review board.
“Under the current practice, a lawsuit brought by the challenging party requesting the IP Court to overturn TIPO's ruling is in nature administrative litigation addressing a dispute between TIPO and the challenging party,” says Hsieh. “If the proposed amendments are passed into law, the same lawsuits will be considered as a private dispute between the patentee and the party initiating the invalidation action. As such, in such a lawsuit where the challenging party is the party whose invalidation action against a granted patent was dismissed by the review board, the defendant would be the patentee; in a lawsuit where the challenging party is the patentee whose patent was invalidated by the review board’s ruling, the defendant would be the party who requests the review board to invalidate the same patent.”
Hsieh adds, “As TIPO’s review board will conduct hear and review a patent invalidation proceeding in accordance with an examination plan which has been accepted by the parties, the invalidation proceeding would be expected to be conducted at a faster pace; both parties would need to prepare everything at the earlier stage of the proceedings. Assistance from professionals experienced in IP litigation will be advisable in the patent invalidation proceedings; furthermore, under the proposed amendments, the parties shall be represented by attorneys, patent attorneys, or patent agents in the lawsuit proceedings following a review board ruling.”
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