To enhance the transparency and openness of the examination process for patent invalidation cases in Taiwan, and to ensure that the two warring parties have ample opportunity to express their opinions while simplifying subsequent administrative remedy proceedings, the Intellectual Property Office (hereinafter referred to as the “IPO”) announced the implementation of the “Framework on the Hearing System for Patent Invalidation Cases” on March 30, 2018. In response to this, our firm provided an introduction in June 2018.
To date, the IPO has held nearly thirty hearings. Based on practical implementation experience and feedback from relevant industries, the IPO announced a draft amendment to the Framework on May 10, 2024, which took effect on June 11, 2024. The main points of this amendment include:
- The original Framework is renamed as the “Guidelines on the Hearing System for Patent Invalidation Cases.”
- The amendment aims at enhancing the function of preparatory hearings, including organizing and simplifying the issues to be discussed, clarifying the amendments/corrections conducted by the patentee in an invalidation action. In addition, it provides a stipulation for the two parties to negotiate for the key points to be discussed in the hearing, with the stipulation that both parties shall be bound by the consent between them.
Under these provisions, once a consent is reached, the parties may face certain restrictions regarding the introduction of new issues or new evidence outside of the consent. According to Articles 73 and 74 of the current Patent Act, as well as the relevant provisions of the Guidelines for Patent Invalidation Examination, the timing for the invalidation petitioner to supplement reasons or evidence and the opportunity for the patentee to make amendments/corrections are both quite constrained. How these regulations will interact with the binding nature of the invalidation hearing consents warrants further attention.
- The hearing host may appropriately disclose his tentative views on factual, legal, or evidentiary issues.
This is in reference to Article 29, Paragraph 2 of the Intellectual Property Case Adjudication Act, which reads: “[t]he presiding judge or commissioned judge shall indicate the points at issue to the parties regarding the legal relations of the case and may express and appropriately disclose his legal opinions and tentative views at the appropriate time,” and Article 6, Paragraph 3 of the same Act, which reads: “[t]he report prepared by the technical examiner may be disclosed in whole or in part if the court deems it necessary.” This demonstrates that the design of patent dispute resolution procedures at all levels in Taiwan aims towards enhancing the transparency and protection of the procedural rights of the parties involved.
- If a party, interested person, witness, expert, or their agent cannot attend a hearing in person, the hearing host may, at his discretion or upon request, conduct the hearing via "remote video conferencing" and consider such participation as attendance at the hearing.
Given the increasing prevalence of video conferencing in the post-pandemic era, this measure can alleviate the burden of travel for attending hearings and particularly address the practical needs of foreign parties. However, whether remote video conferencing will still be premised on the option for in-person hearings remains to be observed.
- An ex parte hearing can be held in the absence of a party from the hearing. However, a new hearing date should be set under the following circumstances: (1) The absent party did not receive legal notification within a reasonable period of time, or could not attend due to natural disasters or other legitimate reasons; and (2) the attending party could not provide necessary proof for matters on which the IPO should investigate ex officio; or the reasons, facts, or evidence presented by the attending party were not communicated to the absent party within a reasonable period of time.
- Hearing records may be documented in a question-and-answer format, supplemented by audio or video recordings, to simplify their content.
The content of the aforementioned amendment largely reflects past implementation experiences and feedback from the industry. The goal of the amendment is to enhance the hearing procedures and increase the credibility of the examination results. Our firm will continue to monitor developments and provide timely reports.