It has been a longstanding practice in Taiwan that patent invalidation cases are examined in written form and proceeded on a pleading-and-defense basis under which the two parties involved are allowed to alternately present their contentions in written form and Taiwan's IP Office (hereinafter referred to as the TIPO), upon receipt of the brief/counter-statement lodged by either party, will serve a copy on the other party along with a notification for filing a response. The TIPO will proceed to examine all the documents/materials on file and render a Decision after the two parties have exhausted their views and have no observations or new evidence to file or the TIPO believes that the observations submitted are sufficient and requires no more observations from either party.
If either of the parties is not satisfied with the Decision rendered by the TIPO, an Appeal can be filed with the Board of Appeals. Likewise, a party, not being satisfied with the Decision rendered by the Board of Appeals, may file a petition for Administrative Litigation with the IP Court, and, if necessary, a further appeal with the Supreme Administrative Court.
The TIPO, in an attempt to render the examination of patent invalidation cases to be transparent and made known to public, has had every intention to introduce the oral hearing system into invalidation cases. Hence, it published on March 30, 2018 the “Framework on the Hearing System for Patent Invalidation Cases” based on the regulations set out in the Administrative Procedure Act relating to the holding of oral hearings by administrative authorities. In contrast to the past examination procedure that did not include oral hearings, if either of the parties involved is dissatisfied with the Decision that the TIPO rendered after holding an oral hearing(s), he/she can bypass the appellant procedure and directly file a petition for administrative litigation with the IP Court.
As stipulated in the “Framework on the Hearing System for Patent Invalidation Cases”, an oral hearing can be held either (1) in response to an application filed by either of the parties involved in an invalidation case; or (2) by the TIPO ex officio. While the TIPO needs to notify all parties involved in writing within thirty days before the date of an oral hearing (see the table below), it will also make public announcement of such an event, providing the cause, the parties involved, date, and location, etc. on the website of the TIPO.
Notwithstanding the TIPO's obligation to inform, the parties involved need to pay close attention to the following:
- If filing of further arguments/evidential materials is needed/available after filing of an invalidation brief/counter-statement, they need to be personally submitted to the TIPO and handed out to the adverse party within 10 days from receipt of the Notice of Hearing.
- The hearing is, in principle, open to the public. However, if either of the parties involved files a request for closed hearing within 10 days from receipt of the Notice, the Host of the hearing has full discretionary power to decide whether it is the entire or part of the hearing that is to be open to the public.
An interested party can file a request with the TIPO (with submission of a proof of his/her capacity as an interested party) for attending the hearing within 20 days from public announcement of the hearing. The general public is also allowed to be a bystander after making an online application with the TIPO on its official website before the hearing date.
Three or more examiners, including the examiner in charge, will preside over the panel hearing, with one of them being assigned as the Host. During the hearing, the two parties involved are allowed to express their opinions and to raise or answer questions over the issues already brought about in the invalidation case.
The TIPO's introduction of the oral hearing system into patent invalidation cases readily demonstrates its willingness to devote more administrative resources thereto, which, in turn, promises higher examination quality and credibility.