SAINT ISLAND INTELLECTUAL PROPERTY GROUP

In 2011, the IP Court judges will be separated into two grand panels: one for the first instance level and the other for the appellate level. 

Since its inception of July 2008, the IP Court has exercised so-called “priority jurisdiction” over civil IP litigations, meaning that all civil IP cases shall come to the IP Court unless the parties have prior agreement to establish exclusive jurisdiction of district courts or the defendant did not dispute the district courts’ jurisdiction over IP matters. More, the IP Court’s jurisdiction extends not only to the 1st instance level but also to the 2nd instance level (the third level is reserved for the Supreme Court). The interesting thing was that all judges of IP Court could review both the 1st instance and 2nd instance cases, so long as the same judge does not appear in both levels in the same case. This practice was criticized as directly causing the low win-rate of appellants in the IP Court. But it will be changed in 2011. 

Another important change is that the IP Court judges have agreed and announced in the end of 2010 that for each level (1st and 2nd) of instance, the hearings of merits will start with the parties debating over the interpretation of disputed claims. In short, we will see Markman hearings in Taiwan. 

Also at the same conference, the IP Court judges, and representatives of the patent office, jointly announced that they would coordinate to avoid disparate opinions on a patent’s validity. The consensus was: whatever decision comes first by whichever side (the Court of the patent office) it should be respected (i.e., followed) by the other side. However, usually the IP Court renders the decision faster than the patent office does, if they start off at the same line.