In Taiwan, the determination of patent validity is a dual-track system. According to the Intellectual Property Case Adjudication Act, the IP Court shall independently rule on patent validity issues in IP-related civil procedures. On the other hand, an alleged infringing party can file an invalidation action with the IP Office to challenge the validity of the based-upon patent in accordance with the Patent Law. When the validity of a patent is determined differently in final conclusive civil and administrative decisions, how the issues would be dealt with has thus received much attention. In this regard, in a recent rehearing case relating to a civil patent infringement litigation, the IP Court and the Supreme Court held divided opinions.
In the aforesaid case, the IP Court found infringement and the patent valid, and the infringement decision was final and conclusive. Thereafter, the patent was found invalid in an invalidation action and the decision was also conclusive. The alleged infringing party then initiated a rehearing action against the infringement decision before the IP Court by adducing Article 496.1.11 of the Code of Civil Procedure as legal basis. The IP Court, in its September 2014 decision, ruled that although Article 496.1.11 of the Code of Civil Procedure stipulates that where the ruling on a civil action, based on which a judgment was rendered, was amended by a subsequent final decision or administrative disposition with binding effect, a rehearing action may be initiated to request a review of the judgment, since the IP Court has the right to independently rule on the validity of a patent, Article 496.1.11 of the Code of Civil Procedure shall not be applicable.
After the case was appealed to the Supreme Court, the Supreme Court rendered a judgment in May 2015 to revoke the IP Court’s decision. The Supreme Court was of the opinion that the patent right is granted to the patent owner by the IP Office via an administrative decision, and if the patent right is subsequently revoked conclusively, the effect of the patent right is then deemed null and void ab initio. On this score, when a patent is found invalid in an invalidation action conclusively, this should be considered an amendment of the administrative decision. Therefore, the revocation of the patent based upon which the patent holder previously filed and succeeded in the infringement litigation has destabilized the basis of the IP Court’s infringement decision.
It can be known from the Supreme Court’s opinion that even though the IP Court has independently ruled on patent validity and deemed a patent valid, if the final outcome of the invalidation action filed with the IP Office is that the patent is invalid, the latter will prevail.