SAINT ISLAND INTELLECTUAL PROPERTY GROUP

Where there are doubts as to the validity of a patent, a patent invalidation action may be filed with the Taiwan Intellectual Property Office (TIPO) to request revocation of the patent, or patent invalidity may be used as a defense in infringement litigation to assert non-infringement. 
 
Regarding using patent invalidity as a defense, Article 16 of the Intellectual Property Case Adjudication Act mandates that, when a party claims or defends that an intellectual property right shall be cancelled or revoked, the Court shall decide based on the merits of the case. In other words, the determination of patent validity in Taiwan is a dual-track system. Because of this, there may be two different determinations on the validity of a patent. For instance, the Court may find a patent invalid when ruling on a validity defense claim while the TIPO may hold that the same patent is valid in an invalidation action.
 
In actual practice, for invalidity defenses raised in civil litigation, the percentage of patents found invalid by the IP Court decreased from 80% in the early years to about 50% in 2013. The percentage in 2014 was even lower than 50%.
 
A comparison of the outcomes of cases involving patent validity determined by both the Court and the TIPO shows that about 90% of the patents have the same outcomes in the Court and the TIPO, which means that the opinions of the Court and the TIPO differ for about 10% of such cases. For these 10% cases, they were mostly found valid by the TIPO but invalid by the Court. This may be due to the facts that the patent owner may have the chance to amend the claims to overcome the patent invalidity challenge during the invalidation proceedings in the TIPO, and that the Court adopts a slightly higher standard regarding inventive step than the TIPO. Particularly, their views concerning the combination of exhibits are at variance as to, e.g., whether the technical fields are the same, whether the problems to be solved are the same, and whether the teachings in the secondary reference are sufficient to cure the deficiency of the primary reference.