In Taiwan's patent invalidation practice, it is common for complainants to rely on foreign-language prior art references to challenge the validity of a patent. Pursuant to Article 3, Paragraph 2 of the Enforcement Rules of the Patent Act and Article 121, Paragraph 1, Subparagraph 2 of the Administrative Litigation Act, both the Taiwan Intellectual Property Office (hereinafter referred to as the “TIPO”) and the Intellectual Property and Commercial Court (hereinafter referred to as the “IPC Court”) may, when deemed necessary, require the complainants to submit the Chinese translation of such foreign-language references during the invalidation proceedings and administrative litigation, respectively. These provisions, in principle, allow TIPO and the IPC Court to determine, on a case-by-case basis, whether the submission of translations should be required.
Past cases show that when the outcome of an invalidation proceeding or administrative litigation is unfavorable to the patentee (i.e., when the patent is determined to be revoked), it is common for the patentee to argue in subsequent remedial procedures that the TIPO or the IPC Court has misinterpreted the foreign-language prior art references. In some instances, patentees even attributed the unfavorable outcome to the failure of the TIPO or the IPC Court to require the complainant to submit translations of the prior art references. In response, the Supreme Administrative Court's Judgments 2015 Pan Zi No. 78 and 2015 Pan Zi No. 214, held that the TIPO and the IPC Court should require the complainant to submit a translation. The TIPO subsequently amended the relevant examination guidelines for invalidation proceedings, stipulating that, in principle, the complainant must provide a full or partial Chinese translation of foreign-language prior art references, in order to avoid misinterpretation caused by language barrier. Where a translation is not provided, or where the accuracy of a translation is in question, the TIPO may notify the complainant to submit supplementary materials or conduct investigation by ex officio.
With respect to the TIPO's investigation method by ex officio for the Chinese translation of foreign-language prior art references, in a recent invalidation case (Case No. 110117378N01), the TIPO issued a notice requesting the complainant to submit a full or partial Chinese translation of the cited U.S. patent within a given period; otherwise, TIPO would refer to the machine translation attached to the notice, which was generated by using Google Patents translation function. Since the complainant failed to submit the translation within the given time, the TIPO relied on the machine translation content to interpret the prior art reference and ultimately rendered a decision invalidating the patent. The patentee thereafter filed the administrative litigation before the IPC Court, claiming that the machine translation contained numerous errors and that the TIPO directly quoted those erroneous translations in its decision, thereby misinterpreting the prior art reference. In April 2025, the IPC Court rendered its Judgment 2025 Xing Zhuan Su Zi No. 47, holding that the TIPO was not required to wait for the complainant's submission of translations and could, in order to avoid procedural delays, rely on a usable translation to proceed with the examination. The IPC Court further stated that the evidence submitted in the invalidation proceeding is still the same English U.S. patent provided by the complainant, so that there was no impropriety in the TIPO's examination process. Furthermore, the IPC Court mentioned that the TIPO had copied the aforementioned notice with machine translation to the patentee, who therefore had the opportunity to raise any objection regarding the machine-translated content, and accordingly, the TIPO was not partial. As for the alleged translation errors, the IPC Court stated that while the machine translation may not be perfectly fluent, the technical content can still be reasonably understood in context. After the IPC Court examined each of the patentee's objections to the translation, it concluded that the translation did not mislead the technical content of the prior art, and ultimately held that the patent was invalid.
Under current administrative litigation practice of the IPC Court, the appointed judge, during the preparatory proceedings, typically does pay attention to whether the complainant has submitted a Chinese translation of foreign-language prior art references. Even if the complainant has previously provided translations of some paragraphs, some judges may still require a full translation or additional partial translation of the cited paragraphs. Where the prior art reference is not in English language, such as Japanese, Korean, or German, such requirements from the IPC Court are especially common. Similar situation may also arise in certain civil litigation cases where a defendant submits foreign-language prior art references to challenge the validity of a patent.
With the rapid developments of large language models (LLMs) of AI technology, there will be more and more opportunities to use machine translation in patent practice. It is worthwhile to observe whether the TIPO will more broadly adopt machine translation by ex officio as the basis for examining patent validity cases in future. Nevertheless, challenges remain regarding the accuracy of machine translation of patent documents, such as the self-defined terms in the specification, the logical structure of technical explanations, polysemous expressions or polysematic words, and the inherent grammatical structures of certain languages. Therefore, parties involved in invalidation proceedings, administrative litigation, as well as civil litigation should exercise caution when providing Chinese translations generated from machine translation of foreign-language evidence, and the opposing parties should also pay attention to express opinions timely to safeguard their rights and interests.