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Who Should Provide Translation of Foreign-Language Invalidation Evidence?
Article 73, Paragraph 1 of the Taiwan Patent Act stipulates: "Where an invalidation action is filed, a request form containing a statement and reason(s) along with evidence shall be provided." Accordingly, in patent invalidation proceedings, the invalidation petitioner bears the objective burden of proof. Furthermore, regarding the processing of foreign-language documentary evidence, Article 3, Paragraph 2 of the Enforcement Rules of the Patent Act provides: "The document(s) for filing a patent application or other proceedings shall be in Chinese. In case any document(s) of proof is written in a foreign language, the Patent Office may, as it deems necessary, request the applicant to submit a full-text Chinese translation or a Chinese translation of an excerpt thereof." Therefore, when an invalidation petitioner submits a foreign reference as invalidation evidence, the Taiwan Intellectual Property Office (hereinafter "TIPO") may require the petitioner to provide a Chinese translation to facilitate the examination. However, in invalidation proceedings and subsequent administrative litigation, is it appropriate for a patentee facing the risk of revocation to steadfastly adhere to the position that "the burden of proof lies with the invalidation petitioner"? Especially when the patentee believes that the translation provided by the opposing party or the machine translation adopted by the TIPO is incorrect, is it wise to merely point out translation errors without submitting a correct translation, in hopes of obtaining a favorable decision under the system of burden of proof allocation? The Supreme Administrative Court adopted a negative view on this question in its Judgment No. 2026-Shang-359, rendered on May 20, 2026.
The plaintiff in this case was the patentee, whose patent was challenged by an invalidation petitioner. Evidence 2 cited by the petitioner was a foreign-language document. During the TIPO's invalidation examination, it issued a letter notifying the petitioner to submit a Chinese translation of Evidence 2 within a one-month time limit (hereinafter "the Letter in question"), stating that "if the translation is not submitted within the time limit, the examination will be conducted based on the Google Chinese translation attached to this letter." The patentee was also copied on this letter. The petitioner failed to submit the Chinese translation within the time limit, and the patentee did not raise any dispute regarding the accuracy of the Google Chinese translation. Consequently, the TIPO rendered a decision of "invalidation established, patent to be revoked" based on the foreign-language evidence and the Google Chinese translation. The patentee subsequently filed an administrative lawsuit with the Intellectual Property and Commercial Court (hereinafter "IPCC"), asserting that the Google Chinese translation contained multiple errors; the IPCC thus ordered the petitioner to submit a formal Chinese translation during the trial, which the petitioner did in a timely manner. However, facing the newly submitted translation by the petitioner, the patentee still chose not to submit their own translation, and merely pointed out in their brief that the petitioner's new translation was inaccurate. The IPCC ultimately ruled against the patentee. Dissatisfied, the patentee appealed to the Supreme Administrative Court, arguing that TIPO failed to order the petitioner to provide an accurate translation, and that the Letter in question did not require the patentee to respond, rendering them unable to amend the patent or respond to the translation. The patentee further argued that the Google Chinese translation cited in the TIPO's invalidation decision was not submitted by the petitioner and thus did not constitute invalidation evidence, and that TIPO failed to afford the patentee an opportunity to respond, thereby prejudicing their procedural interests.
The Supreme Administrative Court dismissed the patentee's appeal with the aforementioned Judgment No. 2025-Shang-359. Its reasoning is summarized as follows:
1. The patentee was copied on the TIPO's Letter in question; however, the patentee did not apply to amend the patent in question before the invalidation decision was rendered, nor did they dispute the accuracy of the Google Chinese translation. Therefore, the procedure by which the TIPO rendered the invalidation decision was without flaw and did not affect the patentee's right to apply for amendment.
2. In administrative litigation, if the parties dispute the content of a translation of foreign-language evidence, the court may, when necessary, order the parties to submit a Chinese translation and conduct oral arguments pursuant to Article 121, Paragraph 1, Subparagraph 2 of the Administrative Litigation Act. However, the parties may also submit a Chinese translation on their own accord to assist the court in making a proper judgment. In this case, the court of first instance had ordered the petitioner to submit a Chinese translation of Evidence 2, which the petitioner did. The patentee, however, merely stated in their oral argument brief that the said Chinese translation was also inaccurate, without submitting their own complete or partial Chinese translation. Under these circumstances, regarding the assertion that the invalidation decision's reasoning erred by citing the Google Chinese translation, the first-instance judgment detailed the technical content respectively based on the original text of Evidence 2, and subsequently evaluated the inventive step of each claim of the patent in question based on the technical content disclosed in the specification of Evidence 2. Thus, there was no lack of reasoning in the judgment.
3. Although the petitioner did not submit a complete or partial Chinese translation of Evidence 2 during the invalidation proceedings, their statement of grounds for invalidation had already specified the asserted legal provisions, cited the foreign text of Evidence 2 to state specific facts, and established the relationship between each specific fact and the evidence. Therefore, the TIPO's evaluation—based on the foreign text and drawings disclosed in Evidence 2 and with reference to the aforementioned Google Chinese translation, within the scope of the invalidation declaration, taking into consideration all statements by the parties and the results of fact-finding and evidence investigation, and in accordance with the rules of logic and empirical experience—even if not entirely identical to the correspondence and comparison results claimed by the petitioner, did not constitute an ex officio consideration of grounds not raised by the petitioner. Consequently, there was no need for the TIPO to notify the patentee to respond within a specified time limit pursuant to Article 75 of the Patent Act.
From the above, it can be understood that while the invalidation petitioner bears the burden of proof for their invalidation requests, the patentee cannot therefore assume that the clarification and investigation of the evidence content have nothing to do with them. Instead, they bear a duty of cooperation to assist the court in its fact-finding. When a patentee disputes the translated content of foreign-language evidence, they had better to actively submit a Chinese translation that they approve of, to assist the court in making an appropriate judgment.