SAINT ISLAND INTELLECTUAL PROPERTY GROUP

Taiwan’s Council of Grand Justices rendered on February 9, 2018 Interpretation No. 761 addressing the issue on whether or not judges and technical examiners at the Intellectual Property Court (hereinafter referred to as “IP Court”) are obliged to abide by Article 19.3 of the Administrative Litigation Law.  According to the stipulation of said Article, after a Judge has participated in hearing a civil action that is related to an administrative litigation action filed subsequently, he/she shall abstain from taking up adjudication of the administrative litigation action.

A dual litigation system is adopted in Taiwan in which civil litigations are adjudicated by forums with civil jurisdiction while administrative litigation actions are heard by forums with jurisdiction over administrative litigation actions. To avoid the risk that a Judge may prejudge an administrative litigation action after his/her hearing of a related civil litigation case, the Administrative Litigation Act mandates that, a judge in charge of a civil action for patent infringement should take the initiative to abstain from ruling on a related administrative litigation action, for example, an action filed by the infringer against a Decision rendered by the IP Office in favor of the patent owner. 

The aforesaid stringent “doctrine of recusal” was relaxed in tandem with the implementation of Article 34.2 of the Intellectual Property Case Adjudication Act. As expressly indicated in the legislative notes presented during the legislation process of the Adjudication Act, given the sophisticated nature inherent in intellectual property cases, whenever there are civil, criminal or administrative litigation cases relating to one and the same intellectual property right, all these cases are allowed to be referred to one and the same Judge for adjudication in order to maintain consistency in judgment.  By relaxing the “doctrine of recusal”,  the Adjudication Act is purported to maintain consistency in judgment and solve the dispute more efficiently when it occurs that a patent owner files a civil action for patent infringement with the civil panel of the IP Court and the alleged infringer takes a counter-measure by filing with the IP Office an invalidation action which then proceeds to the stage of administrative litigation over which  the administrative panel of the IP Court has jurisdiction.   It is also stipulated in the Adjudication Act that the “doctrine of recusal” applies not only to judges but also to technical examiners. 

The Council of Grand Justices held a respectful attitude towards the legislative spirit of the Adjudication Act.  Interpretation No. 761 was released by the Council embracing the belief that some relaxation of the “doctrine of recusal”  as stipulated in the Adjudication Act conformed to the Constitutional Law.  This is the very first interpretation relating to civil actions for patent infringement vs. administrative litigation actions filed with regard to one and the same patent right under the jurisdiction of the IP Court since its establishment and operation on July 1, 2008.