- How are infringement proceedings started?
The plaintiff must file an infringement complaint with a court. As the IP Court is a special court that deals with all IP-related lawsuits, most plaintiffs would file a patent infringement case with the IP Court despite the fact that the IP Court has no exclusive jurisdiction over the matter.
- Who can bring infringement proceedings (what about licensees and co-owners)?
A patentee may bring an infringement proceeding demanding a person who infringes, or is likely to infringe the patent, to stop or prevent such infringement according to Article 96 of the Patent Act.
An exclusive licensee may, within the licensed scope, bring a proceeding on his/her own behalf to stop or prevent patent infringement unless it is otherwise provided for in an agreement, such agreement shall prevail based upon Article 96 of the Patent Act. A non-exclusive licensee, however, does not have the right to make such demands.
In theory, any co-owner of a patent is entitled to bring an infringement proceeding on his/her own behalf without consent from other co-owners, unless otherwise set out in their agreement. The outcome of this litigation is effective among all co-owners in view of Article 12 of the Patent Act, although courts have split opinions on this matter.
- Are declarations of non-infringement available?
Yes, declarations of non-infringement are available.
- How is the validity of a patent challenged?
A party who would like to challenge a patent’s validity can do so in pending patent infringement litigation as the defense, or file an invalidity proceeding with TIPO.
- Who can challenge the validity of a patent?
Defendants in a patent infringement proceeding may challenge the validity of the patent as a defense.
Otherwise, TIPO is the competent authority which can invalidate the rights of a granted patent. According to Article 71 of the Patent Act, anyone may challenge the validity of a patent via TIPO under any of the following circumstances:
- There is a violation of patentability, disclosure requirements, first-to-file principle, the requirements of one creation applied for invention patent and utility model patent, the limitation on divisional patent applications, the limitation on amendment, the limitation on the Chinese translation of foreign documents and the correction thereof, the limitation on post-grant amendments, or the limitation on conversion of patent applications;
- The home country of the patentee does not accept the patent applications filed by R.O.C. nationals.
However, only an interested party can challenge the validity of a patent if the ground of invalidity is based on entitlement to patent application, namely, there is a violation of the joint application requirement, or the invention patent owner is not entitled to file the patent application.
- Can other types of proceedings be brought too (entitlement / employee compensation etc)?
Patent ownership disputes, entitlement to patent application, employee compensation, inventor’s right to claim his/her name or reputation, compulsory license and non-infringement declarations are the types of proceedings which can be brought in addition to patent infringement.
- Is it possible to check at court or on a register whether a patent is being litigated?
No, only the interested parties are entitled to check litigation at court.
Procedural steps to trial
- Does the court set a timetable for steps in the case to trial?
Yes. In order to maintain the Court’s efficiency, the IP Court adopts a trial scheme for civil cases concerning patent infringement. The timetable is as follows:
- Filing a complaint until the acceptance of the case
The first step is that after the complaint is received and reviewed by the reviewing board, there are 30 days to check the formality of the complaint. If the formality of the complaint is correct, a first court order will be served to the defendant requiring submission of a response.
If the defendant raises a procedural issue, both parties will be ordered to file a brief regarding the issue and exchange the briefs, or the court will proceed with the preparation procedure. The court will issue an interlocutory decision within 60 days after the defendant raised the procedural issue. After this period, the case will either be dismissed for the procedural issue, transferred to another court for proper jurisdiction, or enter preparation procedure.
If the defendant raises a substantive issue after receiving the court’s first order, there are 30 days for the court’s consideration on whether to assign the case to a technical examiner before the second court order.
- Preparatory procedure
In the preparation procedure, a second court order will be served to the Plaintiff requiring submission of a brief summarizing the issues at dispute after the defendant submitted the response. 30 days later, a third court order will be delivered to the defendant requiring submission of a brief summarizing the issues at dispute. The procedural examination will be finished within 30 days after the defendant’s submission of the brief and the case will then be distributed to one tribunal. The court manages the preparation procedure, summarizing the issues and planning how to conduct the trial.
There are about 60 days before the court holds the first oral argument. The parties are required to submit briefs explaining all arguments for the issues and evidence used for each of the arguments within these 60 days. These briefs will be delivered to the other party and the court.
- Oral arguments (Trial)
A trial is termed an oral argument under the Code of Civil Procedure.
When first oral argument is held the validity issue regarding the disputed patent is adjudicated while the Court will also look at the issue of claim construction.
Then the court will hold the second oral argument 60 days after the first oral argument. Within this 60-day period, the same briefs and evidence are required from both parties.
If necessary, the court will hold the oral arguments as necessary, and the same briefs and evidence from both parties are similarly required. Then, a judgment is made and the case is over.
- Is it possible to amend a patent during proceedings and, if so, how?
Yes, the patent owner is entitled to amend the granted claims of the patent at issue and to submit the same to TIPO anytime before the term of the patent at issue expires, if the patent at issue, in part or in entirety of its claims, was not held invalid by TIPO or the Administrative Court under the local practice.
During the civil proceedings, the plaintiff may argue against the defendant's defense of patent invalidity by filing a claim amendment with TIPO or stating that a claim amendment the plaintiff submitted is still pending TIPO review as long as the patent at issue, in part or in entirety of its claims, was not held invalid by TIPO or the Administrative Court, and may request the Court to take into account the submitted claim amendment under Article 32 of the Intellectual Property Case Adjudication Rules.
- Do parties have to provide discovery/disclosure of documents to the other side? (If so, please explain classes of documents)
As a civil law jurisdiction, there is no discovery proceeding in a civil litigation. However, according to Article 344 of the Code of Civil Procedure, a party has the duty to produce the following documents:
- Documents to which such party has made reference in the course of the litigation proceeding;
- Documents which the opposing party may require the delivery or an inspection thereof pursuant to the applicable laws;
- Documents which are created in the interests of the opposing party;
- Commercial accounting books;
- Documents which are created regarding matters relating to the action.
Where the content of a document provided involves the privacy or business secret of a party or a third person and the resulting disclosure may result in material harm to such party or third person, the party may refuse to produce such document. Notwithstanding, in order to determine whether the party has a justifiable reason to refuse the production of the document, the court, if necessary, may order the party to produce the document and examine it in private.
- Are witnesses (fact or expert) deposed?
Yes. According to Article 302 of the Code of Civil Procedure, except as otherwise provided by the laws, every person is under a general duty to testify in an action between others.
- Can issues in a case be narrowed by requests for admissions/stipulations?
Yes, during the preparatory proceeding, the commissioned judge should clarify the relations involved in the action. According to Articles 268-1 and 270-1 of the Code of Civil Procedure, the commissioned judge may order parties to negotiate on issues alleged within a designated period of time, to reach an agreement on the simplified issues and make joint report to the court. Parties shall be bound by the agreement reached, unless both parties agree to amend otherwise, or where reasons exist not imputable to the parties, or other circumstances render such a binding agreement manifestly unfair.
Note that issues in a case can only be narrowed at the preparatory stage and not beyond.
- Can facts in a case proven by experiments?
Yes, according to Article 284 of the Code of Civil Procedure, to make a preliminary showing of a factual allegation, all kinds of evidence may be used to establish the truth of such allegation to the belief of the court, except for the kind of evidence that cannot be submitted immediately. The Court will decide ways to investigate evidence and steps thereof, such as, necessities of examination, direct investigation, document-collection, and mandatory response upon a court’s formal request. Laboratorial experiments can also be conducted when the Court believes it is necessary.
- Are expert witnesses used? If so, are they appointed by the court or parties?
Yes, according to Article 326 of the Code of Civil Procedure, expert witnesses may be appointed by the court but the court may also accord parties an opportunity to be heard. If the parties have agreed upon the designation of an expert witness, the court shall appoint such expert witness, except where the court considers inappropriate. The court may also replace an appointed expert witness.
- Is written expert and fact evidence exchanged before trial?
Yes. Both parties are required to submit to the Court a brief explaining all arguments for the issues and evidence used for each of the arguments in order to hold an oral argument. A copy of said brief shall be delivered to the other party.
- Can some matters be addressed by the court separately before trial? (eg. claim construction)?
Yes, under Article 268-1 of the Code of Civil Procedure the Court will summarize and simplify the issues, including claim construction, patent validity, infringement or non-infringement, and any calculations for damages. All matters can be addressed during the preparatory procedure before trial (an oral argument).
- How is the confidentiality of information and documents maintained?
If one party thinks that the documents submitted by the other party are concerning the first party’s trade secrets, the first party may file a motion to seek for an order to keep the documents under trade secret protection according to Articles 11 and 12 of the Intellectual Property Case Adjudication Act.