Taiwan's patent system has been modified several times with a view to expediting the resolution of disputes over patent rights. For example, in order to prevent an invalidation action from dragging on too long, a rigid time frame is introduced into the current Patent Act implemented and enforced from earlier last year. As such, either the invalidation petitioner or the patentee, under the current Patent Act, is placed under a tight schedule and time pressure and may be pushed to lay all their cards on the table in one go to improve the chances of success, resulting in Taiwan’s IP Office (TIPO) receiving increased concerns. In addition, according to the current Patent act, the losing party of an invalidation action may file an appeal and in turn an administrative litigation with TIPO named as the defendant. The opposing party can only participate in the administrative litigation proceedings in the capacity of an intervening party and thus cannot possibly express his/her opinion exhaustively.
In order to fundamentally solve the problem, the draft Amendment of the Patent Act published on December 30, 2020 provides an entirely new legal framework. A Committee for Review and Dispute Resolution, similar to the PTAB in the United States, is to be set up within TIPO to handle review of formally rejected cases and examination of invalidation cases. The Committee is composed of senior patent examiners or legal experts designated by TIPO to ensure that the cases under the Committee’s examination/review are handled with professional excellence. “Legal experts” refers to staff members of TIPO who have substantial experiences dealing with legal affairs, and matters related to appeal or litigation. Specially, three or five members will form a panel which conducts examination of invalidation cases, and review of formally rejected cases; one of them is to be appointed as the presiding panelist. While all cases will be determined by the panel in a collaborative manner, invalidation cases are basically examined via oral hearings. In order to enhance the effectiveness of oral hearings, the panel, when necessary, may follow the preparatory procedures by outlining the points of contention by the two opposing parties, and disclosing the panel’s opinion to the two parties appropriately. As such, the time pressure for filing evidence or amendment will be relaxed to some extent. Moreover, during the examination proceedings, the panel is allowed to render an Intermediate Decision and to inform of the two parties that a Final Decision is to be issued. If the patentee proceeds to file an amendment in response to an invalidation action filed against his/her patent, the panel may render an Intermediate Decision specific to the amendment. In the meantime, it can inform of the two parties that no further amendment or evidence/reasons can be filed before issuance of a Final Decision.
The types of cases that will be directly examined by the Committed include:
i. invalidation actions;
ii. invalidation actions against granted invention patent term extensions; and
iii. compulsory license recordals upon request
Under the current practice, if the losing party of an invalidation/ cancellation action is dissatisfied with a Decision rendered by TIPO, he/she may file an Appeal and in turn, an Administrative Litigation to seek review of the IP Office’s Decision. The appeal procedure cannot be bypassed unless oral hearings have been held during the examination proceedings before TIPO.
A significant change introduced into the draft amendment is the abolishment of appeal proceedings. According to the draft amendment, if the losing party of an invalidation action is dissatisfied with a decision rendered by the panel, he/she can no longer attend appeal proceedings but should directly file a litigation with the IP and Commercial Court to seek judicial review of the decision. The court system for judicial review remains to be a two-instance system; however, the litigation will shift from administrative to civil proceedings. The two parties may directly participate in the oral hearings held by the IP and Commercial Court in the capacity of a plaintiff and a defendant and express their opinions comprehensively. The losing party, if not satisfied with the Decision rendered by the IP and Commercial Court, may further appeal the case to the Supreme Court.
An overhaul change to existing legal framework will be brought about by the amendment of the Patent Act. It is anticipated that there will be a leeway for TIPO to make further revisions after looking for opinions from the public.