Three-and-a-half years on: patent litigation before the IP Court

Since the creation of the IP Court in July 2008, there have been some interesting developments in patent litigation. But has the new IP Court resolved all of the problems that existed in the old system? Before the reform, patent litigation in Taiwan was heavily criticised for its lengthy proceedings, lack of ability to deal with technical issues, difficulties in collecting evidence and misuse of preliminary injunctions. While the IP Court has been able to address some of these issues, in relation to some problems there is still room for improvement.

Before the IP Court was established, a plaintiff that brought a claim for patent infringement in the civil courts would normally have to wait for three to five years before the court began to review the case. This is because under the old system, the civil courts had no jurisdiction over the validity of a patent, and therefore had to stay the infringement case pending a final decision on the validity of the patent by the administrative courts. Following the reform, the IP Court has jurisdiction to decide the validity of the patent in a particular case and to issue a judgment if the defendant raised the invalidity defence. This has resulted in speedier patent infringement litigation. According to statistics provided by the Taiwan International Patent and Law Office, it now takes an average of 155.38 days for the IP Court to render its first instance judgment.

The second interesting feature to note is that the appointment of a technical examination officer to assist the judge has greatly improved the court's ability to deal with various technical issues in patent litigation. In an oral presentation conducted by the former head of technical examination officers, he found that the judges have greatly improved their technical knowledge through their interaction with technical examination officers. This has also decreased the need for the parties to bring multiple verification reports in a single patent litigation.

The reform also set down rules that allow IP Court judges to issue an evidence preservation order to examine or preserve the evidence before the plaintiff files the complaint. This is an effective weapon for the court, since Taiwan has no US-style discovery procedure. Nevertheless, in practice, only 8% of applications have been granted since July 2008, which indicates the conservative attitude of the IP Court towards the granting of such orders.

Finally, the new laws clearly list the factors to be considered in granting a preliminary injunction. In the past, a preliminary injunction was issued much more easily if the applicant was willing to post a bond. Now, before a preliminary injunction is issued, the court asks the applicant to show that:

• It is likely to succeed on the merits.
• Irreparable harm would result if the injunction were not granted.
• There is a sufficiently serious question that affects the merits of the litigation which would tip the balance of hardship in the applicant’s favour.
• The injunction will have no adverse impact on public interest.

Since July 2008 only 16% of applications for preliminary injunctions have been granted.

The IP Court has dramatically changed the climate of patent litigation in Taiwan. However, our analysis shows that while some of the shortcomings have been fixed by the new system, there is still room for improvement. Such improvement will need to be made by both the IP Court and legal practitioners.