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Enforcement through the courts

At trial
What level of expertise can a patent owner expect from the courts?

The IP Court was founded under a new system in 2008; as such, it has yet to establish a comprehensive body of jurisprudence. Most first-instance judges in the IP Court are relatively young and have little practical experience in the IP field, so parties often cannot trust or accept their decisions. This similarly applies to attorneys with no technical backgrounds or patent prosecution experience.

In several cases, the IP Court has issued disappointing decisions (particularly in the patent field) because the findings on claim construction for invalidity or infringement were reckless and violated the intention of the law. As a result, some domestic enterprises have refused to file patent applications in Taiwan. 

Are cases decided by one judge, a panel of judges or a jury?

One judge hears all first-instance proceedings in the IP Court. Three judges hear IP Court appeals. A panel of five judges hears all cases brought before the Supreme Court.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials do not exist in Taiwan. 

What role can and do expert witnesses play in proceedings?

In patent cases, expert witnesses can help judges to find facts which involve professional knowledge. The courts can question or agree to question expert witnesses.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Taiwan applies a doctrine of equivalents. In addition to considering the literal scope of a patent claim, a patent’s scope is determined by considering features that that are not substantially different from the technical features of the patent claim.

The following questions are used to determine whether a patent’s features are substantially different:

  • Are the technical features at issue used to perform substantially the same function and produce substantially the same result as those of the claimed technical features?
  • Is the difference between the technical features at issue and the claimed technical features obvious to a person skilled in the art?

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

It is possible to obtain preliminary injunctions.

Preliminary injunctions will not be granted unless it can be proved that satisfying the claim by compulsory execution in future will be impossible or extremely difficult. 

How are issues around infringement and validity treated in your jurisdiction?

In Taiwan, the IP Court and Supreme Court can rule on infringements and patent validity simultaneously, even though they are civil courts. The IP Court has recently begun a new practice whereby it first determines the validity of the patent and, if the patent is valid, it then considers the issue of infringement.

However, as IP Court and Supreme Court judgments regarding patent infringement are technically civil, in theory, their judgments on patent validity are binding only in the case at hand, not any other parallel or associated cases. Final binding judgments regarding patent validity are obtained through the administrative system (ie, claims brought through the IP Office to the Supreme Administrative Court).

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Taiwan’s courts seldom consider decisions from other jurisdictions, unless the issues have been codified or well established as precedent. The courts usually hold that it is pointless to consider other decisions as every jurisdiction has a different legal system. Therefore, unless both the issues and legal systems are substantially similar, foreign decisions are useless.

Damages and remedies
Can the successful party obtain costs from the losing party?

The losing party pays all court fees. However, the winning party will bear any other expenses it paid for during the case.

What are the typical remedies granted to a successful plaintiff?

The typical remedies granted to successful plaintiffs are:

  • preliminary injunctions;
  • final injunctions;
  • reasonable fees for pre-grant use between the patent grant date and publication date, or the date on which the defendant was notified of the existence of the patent application and its contents (available only for invention patents);
  • damages for post-grant infringement;
  • court fees and reasonable costs incurred in stopping the patent infringement; and
  • up to treble damages for an intentional infringement.

How are damages awards calculated? Are punitive damages available?

Unless otherwise provided, compensation is limited to the damage actually suffered and the interest actually lost. Interest which could normally be expected (according to the ordinary course of events, decided projects, equipment or other circumstances) is considered the interest that has been lost. If there is no way to prove the amount of damages suffered, a patentee may claim damages based on the difference between the profits earned through infringement and those that could normally be expected through valid exploitation of the patent.

In addition, damages can be determined on the basis of the profits earned by the infringer as a result of the infringement or reasonable royalties.

Punitive damages are available. Where infringement is considered intentional, the court may – on request and on the basis of the severity of the infringement – award damages that are greater than the loss suffered, not exceeding three times the proven loss. 

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Permanent injunctions are a common remedy and the courts will grant them in all cases in which the patent has not expired, unless the parties settle before the court makes such a determination.  

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

In general, it takes between six and 12 months to obtain a first-instance decision before the IP court. It is generally not possible to expedite this process. 

How much should a litigant plan to pay to take a case through to a first-instance decision?

On average, $5,000 or more may be needed to take a case through to a first-instance decision.

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