Pursuant to Article 33 of Intellectual Property Case Adjudication Act, in an administrative litigation resulting from a patent invalidation action which was dismissed by Taiwan’s Intellectual Property Office (hereunder “TIPO”), the invalidation petitioner as the Plaintiff could submit new prior art evidence, and TIPO, as the Defendant in the litigation, shall respond to said new evidence and indicate whether the arguments provided by the Plaintiff concerning such new evidence have merits. If TIPO determines that the invalidation petitioner’s arguments concerning new evidence are acceptable, how would TIPO submit its response properly in the administrative litigation? Further, if the Intellectual Property Court (hereunder “IP Court”) renders a favorable decision to the invalidation petitioner owing to such new evidence, should TIPO, as the losing party in the litigation, bear the litigation expenses? Or would the IP Court have different considerations?
In the administrative litigation involving new evidence submitted by the Plaintiff during litigation proceedings, 108 Xing Zhuan Geng (1) No. 1, TIPO, as the Defendant, stated its supportive position for the Plaintiff’s arguments on invalidation based on new evidentiary documents. IP Court then ruled in favor of the Plaintiff, revoking the decision made by TIPO, the Defendant in this case. TIPO later listed this case in the Compendium of Patent Administrative Cases this year and stated clearly in the case summary and suggestions that the attitude of TIPO towards the new evidence submitted by the invalidation petitioner in this kind of administrative litigation proceedings is that: “The purpose of TIPO’s attendance at such proceedings is to provide professional opinions for the consideration of the judges of IP Court in view of TIPO’s roles as specialized intellectual property agency. In this regard, it should not be deemed as a defect of TIPO’s original decision, which rendered the patent in dispute to be valid, if IP Court adopts new evidence and revokes TIPO’s original decision because TIPO did provide its professional opinions that the new evidence may render the patent in dispute to be invalidated during the litigation proceedings. As such, TIPO should uphold an “objective position” when providing its opinions, and should remind IP Court that “the expenses of litigation should be borne by the Plaintiff in full” in its Supplementary Defense regarding the new evidence.”
Regarding the burden of litigation expenses, IP Court basically would request the losing party to bear those fees in accordance with Article 98.1 of Code of Administrative Litigation Procedure. However, in certain situations “Where a party has failed in a timely manner to present means of attack or defense, or to meet a specified date or period, or otherwise delayed the proceeding by reason of whatever cause imputable to such party, the court may order such party to bear the litigation expenses incurred from the delay, in full or in part, irrespective of his/her victory.” (Article 82 of Code of Civil Procedure, which is mutatis mutandis applied through Article 104 of Code of Administrative Litigation Procedure). Thus, if the Plaintiff (the invalidation petitioner) wins the administrative case by providing new evidence, although the majority of IP Court decisions required losing party TIPO to bear litigation expenses, some decisions of IP Court recently held that the litigation expenses should not be imposed on TIPO due to equitable principle. For instance, IP Court followed the purpose of Article 82 of Code of Civil Procedure, and demanded the Plaintiff who submitted new evidence to bear the expenses in above-mentioned 108 Xing Zhuan Geng (1) No.1 judgment, as well as in 109 Xing Zhuan Su No.13 and 109 Xing Zhuan Su No.7 decisions. IP Court held that the invalidation decisions denying the petitions are based on the evidentiary documents submitted by invalidation petitioner then, and TIPO never took those new evidence into consideration until the administrative litigation proceedings. While IP Court should review the new evidence during the administrative litigation proceedings pursuant to Article 33 of Intellectual Property Case Adjudication Act, the Plaintiffs (invalidation petitioners) have delayed the whole patentability examination proceedings since they should have submitted all the evidence during the invalidation procedure. In conformity with the purpose of Article 82 of Code of Civil Procedure, the Plaintiffs should bear all litigation expenses.
In addition, IP Court adopted similar reason and decided the litigation expenses should be borne equally between the Plaintiff and Defendant TIPO in 108 Xing Zhuan Su No.54 judgment and 108 Xing Zhuan Su No.43 judgment. Furthermore, although rare in practice, IP Court demanded not only the Plaintiff, but also the Intervener, which is the patentee of disputed patent which was invalidated, should bear the litigation expenses equally in 106 Xing Zhuan Su No.69 judgment. In said judgment, IP Court expressed that since the disputed patent is deemed invalid, meaning that the patent might not meet the legal requirements for patentability at the time of application, it is reasonable to impose part of the litigation expenses on the Intervener.