Reforms of Administrative Appeals System on the Agenda

Taiwan's Intellectual Property Office (TIPO) will hold a public hearing on February 25, 2019 on reforms of administrative appeals system.  According to TIPO's press release, the proposed reforms are intended to achieve two main objects: delayering the procedures and adopting an adversary system at TIPO's level.

First, delayering.  Under the current law, TIPO's ruling on a patent or trademark application or contentious case (e.g. an inter partes proceeding case like an opposition and invalidation action) may go through three levels of appeals before it can become final and irrevocable.  The first level of appeal is reviewed by the Petitions & Appeals Committee of the Ministry of Economic Affairs. However, insufficient of staff with technical backgrounds to assist the Committee's panels in adjudicating patent cases, the Committee reportedly shows a significant tendency to uphold TIPO's rulings in this regard, compared with the IP Court and the Supreme Administrative Court which are at the second and third levels of the administrative appeals system. 

Now, it is proposed to remove the Committee from the system and replace it with a standing trial and appeal board inside TIPO staffed with senior examiners, modeled on the PTAB and TTAB of the USPTO as well as the Patent/Trademark Reexamination Board of the CNIPO, PRC.  Like the US and the PRC models, this board inside TIPO will review appeals of TIPO's adverse rulings on patent and trademark applications. At the same time, it will act as the first-level adjudicator for contentious cases, hence delayering the levels of appeals for these cases from three to two.

Second, in contentious cases proceedings, the board will adopt an adversary system, so as to strengthen its legitimacy of replacing the present Petitions & Appeals Committee (whose proceedings still have a touch of inquisitorial system).  Under the proposed adversary system, these inter partes proceedings will be conducted directly between the parties, and when a party appeals the board's decision to the IP Court, it is the opposite party rather than TIPO that will be named as the defendant. 

In fact, the new hearing system TIPO has implemented in patent invalidation cases since March 2018 (see our Newsletter of Q2 2018[t1] ) is deemed by the local IP community as a “rehearsal” for the current reforms, as said hearing system is semi-adversarial and allows parties to appeal TIPO's rulings based on such hearings directly to the court.  After a trial of almost one year, TIPO is now ready to put the real show on the stage.