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COURTS MUST MAKE DUE CONSIDERATION BEFORE SUS-PENDING PATENT LITIGATION
Article 90 Paragraph 1 of the Patent Act allows the court to suspend civil litigation over inven-tion patent rights pending the irrevocable out-come of a patent application, cancellation action, or revocation action. Articles 108 and 129 of the Act apply the same provision mutatis mutandis to new utility model and new design patents. Article 49 of the Trademark Act contains similar provisions allowing the suspension of litigation. However, Article 90 Paragraph 2 of the Patent Act requires that when ruling whether to suspend proceedings under Paragraph 1, the court must consider the legitimacy of any cancellation ac-tion.
In a 2004 ruling on a motion to set aside a 2004 ruling of the Panchiao District Court suspending civil litigation in a patent infringement case, the Taiwan High Court stated that according to the wording of Article 90 of the Patent Act, under Paragraph 1 the court may, rather than shall, suspend proceedings pending the outcome of a patent cancellation action, taking into consid-eration the specific facts of the case. But Para-graph 2 obliges the court to first investigate the legitimacy of the cancellation action, in order to prevent the cancellation petitioner from using the cancellation action as a means to obstruct the progress of litigation and thereby prevent the patentee from enforcing its rights. The high court set aside the ruling of the district court, on the grounds that it had failed to investigate the legitimacy of the cancellation action concerned.
Upon an appeal against the high court's decision, the Supreme Court upheld the high court's view.
In its 2004 ruling, the Court clearly stated that under Article 486 Paragraphs 4 and 5 of the Code of Civil Procedure, a further appeal against the ruling of an appellate court on a motion to set aside a ruling of a lower court is permissible only on the grounds of a clear misapplication of the law, and only with permission of the lower court; and such permission may be given only where the legal interpretation applied in the original ruling of the lower court involves an important principle. "Clear misapplication of the law" means that the legislative provisions relied upon in the ruling have evidently not been correctly applied, or the ruling is evidently not in keeping with currently established legal interpretations or precedents. "Important principle" means that the legal issue involved is of great significance, and requires further elucidation. But the judgment as to whether or not this is so does not depend on whether the issue decisively affects the outcome of the litigation for the parties. The questions of whether a cancellation action was merely a ploy to delay litigation, and whether there was a need to suspend proceedings, were matters purely for the discretion of the court, and did not involve any issue of clearly incorrect application of the law.
In another 2004 ruling in a similar civil case, the Court also stated that the decision whether to suspend proceedings was a matter for the dis-cretion of the trial court, on consideration of the facts of the case. It did not involve any important principle for the interpretation of the law, and therefore could not be further appealed to the Court.