Trial (Oral Argument)

1. How long does it typically take to get to trial from the start of proceedings?

It takes around 6 months on average from filing a complaint to the first oral argument to be held. In general, the first instance will take around 240 days to conclude a case, while the second instance will take around 220 days to close a case.

2. Is expert and fact evidence given orally?

Yes, in accordance with Articles 193 and 194 of the Code of Civil Procedure,a party shall make factual and legal statements regarding matters involved in the action; and shall state his/her alleged evidence.A party may not quote documents in lieu of oral statements, except where it is necessary to quote certain passages from the documents and then, he/she may do so by reading the most essential parts. According to Article 335 of the Code of Civil Procedure, the court may order an expert witness to appear at the court to provide an explanation to his/her expert testimony. Where there are multiple expert witnesses, they may be ordered to state their opinions jointly or separately.

For fact evidence, Article 278 of the Code of Civil Procedure provides that the parties shall be accorded an opportunity to present their argument regarding the alleged facts before the decision is rendered.

3. Are witnesses cross-examined?

No, the examination of a witness must be directed by the court.

4. Is video evidence used in court and, if so, when?

Yes, video evidence is used in court during oral arguments.

5. How long does a trial last?

An oral argument lasts a few hours to one working day as the case may be.

6. Is a trial open to the public?

Yes, except a trial involving a party’s trade secrets.

7. Is it possible to obtain copies of documents referred to in open court?

Yes. It needs the licensed legal representative to file a brief to request and obtain copies of documents, except those involving trade secrets of the opposing party.

8. When does the court issue its decision?

Following the last oral argument, it takes around two to four weeks for the court to issue its decision.

Remedies available from the court

1. Is the sum payable by an infringer decided at trial or in a separate hearing?

The sum payable by an infringer is decided at trial.

2. How is sum payable by an infringer calculated?

Article 97 of the Patent Act provides that the damages claimed pursuant to this Act may be calculated according to any of the following methods:

  1. If no method of proof can be produced to prove the damages suffered, a patentee may claim damages based on the difference between the profit earned through patent exploitation after infringement and the profit normally expected through exploitation of the same patent;
  2. The profit earned by the infringer as a result of patent infringement; or
  3. The amount calculated on the basis of reasonable royalties that may be collected from exploiting the invention patent being licensed.

Subject to the preceding paragraph, where the infringement is found to be intentionally committed, the court may, upon request, and on the basis of the severity of the infringement, award damages greater than the loss suffered but not exceeding three (3) times of the proven loss.

3. Are all infringers injuncted? If not, what factors are taken into account?

No, not all of those who infringe are injuncted. There are 4 factors the court will consider when deciding whether to grant the provisional injunction:

  1. The likelihood that the applicant of the provisional injunction will win;
  2. Whether the party against which the provisional injunction is granted will suffer irreparable harm;
  3. Balance between the applicant’s damages suffered if the provisional injunction were not granted and the harm suffered by the party against which the provisional injunction is granted; and
  4. Whether granting the provisional injunction will negatively affect public interests.

4. What orders are made regarding infringing products (delivery up / destruction on oath / infringer has to buy back stock)?

Article 96 of the Patent Act stipulates that when making a demand pursuant to requiring a person who infringes or is likely to infringe the patent right to stop or prevent such infringement, the patentee may request for destruction of the infringing articles or the materials or implements used in the infringing act, or request for other necessary disposal.

5. Is revocation of a patent stayed pending appeal?

No. A patent invalidation proceeding is an administrative proceeding reviewed by TIPO, while a validity issue raised during patent infringement litigation is adjudicated by the Court. The two proceedings are governed by separate authorities; neither authority has an obligation to stay its proceeding awaiting the outcome of the other authority.

The cost of litigation

1. Is the winner of a patent litigation entitled to recover its costs? (This question is amended)

Yes. The litigation costs a winning party can recover in first and second instances include court fee but do not include attorney’s fees. However, attorney’s fees can be awarded for cases appealing to the Supreme Court, provided that a representative attorney is statutorily required for litigation at the Supreme Court level.

2. Is the winner at trial entitled to recover its costs?

Yes. The answer is the same as for Question 1. (Or this question should be omitted to comply with Taiwan’s practice).

3. When are costs assessed and how?

The costs must be assessed at the beginning of the lawsuit, and are calculated by the court for about 1.1% of the amount of the value of claim as the case may be.

4. What are the typical ranges of costs of trial on a single patent (validity and infringement)?

The typical range of costs of trial is about 0.1%~0.15% of the amount of the value of claim per instance, but the exact amount of costs is calculated by the court.

5. What are the typical ranges of costs of an appeal (validity and infringement)?

The range of costs of an appeal is about 1.1%~1.65% of the amount of the value of claim, but the exact amount is calculated by the court.