Newsletter
EVIDENCE RULES OF ADMIN-ISTRATIVE COURTS
In a recent appeal judgment in a patent opposi-tion case, the Supreme Administrative Court set aside a judgment of the Taipei High Adminis-trative Court. It has been a rare occurrence in hi-tech patent litigation practice for the Supreme Administrative Court to overturn a judgment of a lower court in this way.
In the case in question, a foreign company (Company A) filed a patent application with the Intellectual Property Office (IPO), which was then allowed and published in the Patent Gazette. During the publication period, a third party filed an opposition action, which the IPO upheld. Company A made an administrative appeal against this decision to the Ministry of Economic Affairs (MOEA), which is the appellate agency for the IPO. The appeal was rejected, and Company A initiated an administrative litigation in the Taipei High Administrative Court.
During the proceedings in the Taipei High Ad-ministrative Court, Company A submitted a set of amended claims to the court for its considera-tion, but the court did not accept them. Company A then commissioned a national university to make a comparison between the technical con-tent of its original patent claims and of the prior art citations raised by the opposition petitioner. The university reached the conclusion that "the characteristics of the invention of the present case are indeed different from those of the cita-tions, and the technical characteristics of the present case cannot be inferred in their entirety from the content of the citations." Company A submitted a comprehensive assessment report issued by the university to demonstrate their contention. However, the court mistakenly as-sumed that the report was based on a comparison with the proposed amended claims presented to the court by Company A during the litigation proceedings, and held that the report's conclu-sions "were inappropriate and had no need to be taken into consideration."
What is more, the Taipei High Administrative Court rendered its judgment based on a piece of evidence which has never been shown to the parties or debated by the parties. It is common practice in patent administrative appeals for the MOEA, acting ex officio, to commission a spe-cialized institute to prepare a written opinion, but to restrict access to the document, so that the parties are often unaware of its existence. This was just the case reported here. Without advis-ing the parties of the existence of such written opinion issued by a certain public university commissioned by the MOEA or instructing the parties to present arguments, the Taipei High Administrative Court directly accepted the con-clusions stated therein, and on this basis dis-missed Company A's administrative suit.
Company A appealed the case to the Supreme Administrative Court, which held that the judgment of the lower court had been unlawful in that it had not applied the law, and that the grounds presented for the judgment had been inadequate. With respect to the important evi-dence, i.e., the assessment report presented by Company A, the lower court had not ordered the IPO to present a defense, or sought the opinions of persons engaged in relevant academic re-search, or presented reasons in its judgment ad-dressing each of the points of the assessment report's conclusions and stating why they were not persuasive; it had directly passed a judgment unfavorable to Company A. This violated Arti-cle 189 of the Code of Administrative Court Procedure, which states: "When making a ruling or passing judgment, the administrative court shall consider the entire substance of the argu-ments and the results of its examination of evi-dence, and shall judge facts according to the principles of logic and experience."
The Supreme Administrative Court further stated that in the technical grounds for its judgment, the lower court had cited the opinion of a public university which was commissioned by the MOEA, but during the trial proceedings it had not informed Company A of the opinion or in-structed Company A to present arguments in response to it. Instead, the court had accepted the content of the opinion and passed a judgment unfavorable to Company A. In this it had vio-lated the principle, stated in Article 141 of the Code of Administrative Court Procedure, that "the court shall inform the parties of the results of its examination of evidence, and instruct them to present arguments." Thus in this respect too, the judgment was flawed. On these grounds, the Supreme Administrative Court reversed the original judgment and remanded the case back to the Taipei High Administrative Court.
Although the above evidence rules cited by the Supreme Administrative Court are set out in general provisions of the Code of Administrative Court Procedure, they are often overlooked by the administrative courts and by parties to litiga-tion. The overturning of the original judgment is a noteworthy effort to enforce these rules.