TIPO introduces new hearing system for invalidation proceedings

On March 1 2018 the Taiwan Intellectual Property Office (TIPO) implemented the Guidelines on Hearing Procedures for Patent Invalidation Cases, which became effective on March 31 2018. The guidelines are based on the Article 107, Clause 2 and Articles 54 to 66 of the Administrative Procedure Act and allow adversarial hearings without amending the Patent Act, which would take significant time.

The guidelines aim to:

• improve patent invalidation examination correctness;
• elevate people’s confidence in patent invalidation examinations through collegial reviews, public hearings and extended participation; and
• simplify any subsequent appeal procedures.

The four main points of the guidelines are as follows:

• Patent invalidation case examiners may hold a hearing ex officio or on request by either party.
• Hearings should be heard and decisions made collegially by a panel of three examiners to ensure that the examination is thorough and comprehensive.
• To clarify facts and discover the truth, parties may give oral arguments to express their opinions fully based on pre-determined issues.
• In principle, patent invalidation hearings should be held publicly – interested parties may apply to attend the hearing alongside both parties and members of the general public may apply online to sit in on the hearing to extend participation.

The guidelines are considered a pilot programme for the anticipated adversarial invalidation procedure, which will be similar to inter partes review hearings. According to the guidelines, both parties must submit evidence and make oral arguments; TIPO is considered a party in invalidation proceedings and may provide evidence ex officio to invalidate patents. Therefore, the guidelines are considered to accord with earlier proposed and actual changes to adversarial hearings in other Asian countries.

According to Article 109 of the Administrative Procedure Act:

“In the case of dissatisfaction having been raised against the administrative disposition rendered pursuant to the preceding article, no administrative appeal or other prior proceedings are required for the purpose of institution of an administrative remedial proceeding in relation thereto.” 

Therefore, under the new hearing system, if either party is dissatisfied with the TIPO’s examination decision based on a hearing, it may file a lawsuit without first exhausting internal appeal procedures, thereby saving time and money (such appeals are statistically unlikely to rule in their favour).

In order for the public to better understand the new hearing system, the following cities will host mock hearings in April 2018:

• Taichung;
• Hsinchu;
• Kaohsiung;
• Tainan; and
• Taipei.

TIPO expects at least 10 hearings to be held this year to help determine whether the Patent Act should be amended (ie, the number of invalidation cases filed for hearings this year may affect the duration of the pilot programme and any future amendments to the Patent Act).

According to the director of TIPO Patent Division III, with inquiries to suitable patent invalidation case parties docketed, no hearings have yet been scheduled as they require the consent of both parties.