In Taiwan, the losing party of civil litigations is obligated to reimburse the prevailing party’s litigation costs, which normally comprise court fees, witness’ traveling expenses, experts’ fees and other necessary disbursements. As for the prevailing party’s attorney’s fee, although the law does not give a clear “no”, it is traditionally deemed not claimable except for that disbursed at the third instance, which is the Supreme Court level, where lawyer’s representation is mandatory under the law. Even for the Supreme Court level, attorney’s fee is remunerated as part of the litigation costs, not as the damages, and the claimable amount is to be determined by the Supreme Court up to a ceiling at NT$0.5 million (approx. US$16,600).
Nevertheless, there has always been a voice to adjust the current practice, especially in the field of patent litigations, to which the centralized and professional Taiwan IP Court exercises priority jurisdiction over the first and second instance levels. One of the pioneer decisions was made in 2013 (2011 Min Zhuan Shang Geng No.1, a second instance decision), wherein the IP Court partially awarded the patentee’s claim of attorney’s fee as damages incurred to enforce its patent right. The patentee, Contour Optik Inc., was represented by Saint Island lawyers. This approach, however, has limited application span because defendants are not in the position to claim for damages of infringement.
In the summer of 2017, the IP Court rendered an even more groundbreaking decision, 105 Min Zhuan Shang No. 71, which not only affirmed attorney’s fee to be included in the reimbursable litigation costs (and thus claimable by either party) but also acknowledged the de facto necessity of attorney’s representation in patent litigations. In this first instance decision, the Judge (Judge Henry TSAI) wrote no less than 3,300 Chinese characters to elaborate his rationale. Even though attorney representation at the first and second instances is not mandatory under the present law, it is essential, said the Judge, that both parties retain competent attorneys to engage in a patent combat of fair quality, which demands the collaboration of technical expertise and knowledge of the law. For how could a patent litigation proceed without a lawyer to attend to such intricate issues as claim construction, analysis of the accused product’s technical features, the all elements rule, and doctrine of equivalents? At least in a patent lawsuit, the prevailing party has good grounds to have his attorney’s fee reimbursed by the other party even though the law does not give a clear “Yes”.
If the above decisions somewhat reflect the IP court’s attitude toward attorney representation in patent litigations, we may expect to find more decisions addressing this topic in the future. Meanwhile, the proposal for mandatory representation at all levels of the courts has been brought to the government’s agenda of judicial reform, which may help heat up the discussion and provide new momentum for winning party to recover its attorney’s fees in patent lawsuits and other IP litigations.