In Taiwan, preliminary injunctions are available for civil disputes, including IP disputes such as patent infringement claims. In urgent cases, Article 538-1 of the Civil Procedure Law allows the civil court to order an urgent disposition before the grant of a preliminary injunction if the court considers it necessary to do so. The urgent disposition applies for seven days, with a possible three-day extension. Therefore, if all the legal requirements are met, a 10-day urgent disposition can be granted.
Although Article 538-1 of the Civil Procedure Law is not new – it came into effect in 2003 – in practice the courts grant few urgent dispositions. This trend continued even after the establishment of the IP Court in 2008. Rights holders usually file motions for preliminary injunctions and urgent dispositions at the same time, but urgent disposition motions are usually rejected.
The situation has changed in 2016, especially in the IP Court, where professional judges and technical examiners handle IP-related cases. Since it was established, the IP Court has become familiar with the pace of IP cases. It is possible for an Article 538-1 urgent disposition to be granted, but only in specific circumstances. The court can rule on an urgent disposition very quickly – even within 24 hours of the motion being filed.
In February 2016, just before the nine-day Chinese New Year holiday, the IP Court granted a seven-day urgent disposition in a case involving the alleged patent infringement of parts of an express train cabin, which is vital for mass transportation in Taiwan during the holidays. Considering the urgency of the case, the applicant filed a motion for an urgent disposition two days before the holiday and the IP Court granted a seven-day urgent disposition within 24 hours. The court's ruling was served on the parties on the day it was issued and took effect just before the holiday. On another motion by the applicant, the seven-day urgent disposition was extended for another three days to ensure that mass transportation would not be interrupted during the holiday period.
The ruling was one small step for a single case, one giant leap for IP practice in Taiwan. It demonstrates the efficiency of the IP Court and its willingness to use all of the remedies available under the law. For rights holders, urgent disposition can be a powerful tool in IP disputes where a temporary injunction is necessary to prevent irreparable harm or imminent damage even before the issuance of a preliminary injunction. This practice can boost the use of the IP Court for dispute resolution, and should be considered when planning IP transactions, licensing and litigation where speed is of the essence.
Yulan Kuo, Jane CC Wang
This article first appeared in IAM. For further information please visit www.iam-media.com.