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The formation of the Intellectual Property Court (the "IP Court") and implementation of the Intellectual Property Case Adjudication Act (the "IP Adjudication Act") on July 1, 2008 marked an important transition in the development of Taiwan's intellectual property litigation mechanisms. A distinguishing feature of the newly formed IP Court is that an allegation by the defendant in a patent infringement case that the patent at issue is invalid now obligates the IP Court itself to rule on said validity issue rather than wait for the Intellectual Property Office (IPO) to resolve the matter through a cancellation action. The Court also no longer has discretion to stay patent litigation due to a pending cancellation action. Because the IPO remains the government authority in charge of patent affairs, the IP Adjudication Act provides that the IP Court may, when necessary, order the IPO to participate in litigation to provide opinions on patent validity. In addition, Technical Examination Officers are available to assist judges of the IP Court in conducting technical investigations and determinations. Currently, most Technical Examination Officers are patent examiners on assignment from the IPO. Over the past three years, these new mechanisms and the growing expertise of IP Court judges have significantly advanced the quality and efficiency of patent litigation in Taiwan.
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Problems remain, however. The limited time the IP Court allocates to trials and its perceived tendency to invalidate patents have raised concerns as to whether the IP Court leans too heavily on Technical Examination Officers. Also of concern are the many cases in which the IP Court's decision regarding the validity of a particular patent conflicts with the result of the IPO's cancellation action on the same patent. These concerns have negatively impacted litigants' faith in the IP Court's decisions. It will be important for the IP Court to take steps to ensure that a correct judgment is delivered without causing undue surprise to the litigants, while maintaining trial efficiency and protecting litigants' procedural and substantive rights.
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In several recent cases, the Supreme Court has taken important steps in this direction:
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First, in decision 98-Tai-Shang-1655, issued on September 10, 2009, the Supreme Court emphasized that Article 8 of the IP Adjudication Act, which provides that "before any special professional knowledge the court already has is adopted as a ground for judgment, parties shall be accorded an opportunity to present their arguments regarding such knowledge" and that "the presiding judge or commissioned judge shall direct the parties to issues concerning the legal relations of the disputed matters, and shall, whenever appropriate, disclose his legal opinions and convictions," means that the IP Court's failure to direct the parties to the relevant technical questions and special professional knowledge already known to the court or failure to appropriately disclose the judge's convictions so that the parties can have an opportunity to present their arguments may constitute deprivation of the parties' opportunity to be heard and cause surprise in fact finding.
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Following that decision, the Supreme Court issued decision 98-Tai-Shang-2373 on December 16, 2009. The decision explained that the IP Court's authority to order the IPO to participate in litigation was designed to help the IP Court arrive at correct judgments and to avoid decisions that conflict with those of the IPO. Therefore, this power should not be ignored simply because a Technical Examination Officer is involved in the litigation. The participation of the IPO is particularly important when the IP Court is considering issuing a judgment that would conflict with the result of a previous cancellation action decided by the IPO. The Supreme Court further pointed out that the Technical Examination Officer merely serves to assist the judge, not to offer independent assessment or act as a witness.
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On January 21, 2010, the Supreme Court issued decision 99-Tai-Shang-112, which reiterated the view of the Technical Examination Officer's role as limited to assisting the judge and reaffirmed the principle that the IP Court should involve the IPO in litigation and solicit its opinion whenever the IP Court's determination based on its special professional knowledge differs from that of the IPO.
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On March 31, 2011, the Supreme Court issued decision 100-Tai-Shang-480. The decision explained in detail that when special professional knowledge of the IP Court or Technical Examination Officers conflicts with determinations made by the IPO, the IP Court should disclose such professional knowledge to the parties and give them the opportunity to present arguments, timely and appropriately disclose the court's conviction, or order the IPO to participate in litigation and provide its opinions. The IP Court should render its judgment only after there has been sufficient adversarial debate.
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In the above series of cases, the Supreme Court has articulated an important procedural requirement concerning determination of patent validity by the IP Court. That is, when the IP Court has a different view from the IPO on the validity of a particular patent, it should first disclose its opinion to the parties and allow them the opportunity to present arguments, or alternatively, solicit the opinion of the IPO by requiring its participation in the litigation. This procedural requirement will help safeguard the procedural and substantive rights of the parties.
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It is now up to the IP Court to implement such procedural protections.
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