When facing an infringement action before the Intellectual Property Court, defendants seeking to assert prior use face an uphill evidentiary battle to convince the court that their product existed before the patent filing date. A look back at the most relevant decisions of the past two years reveals that success or failure hinges on the probative value of the evidence.
The Intellectual Property Court (IPC) recently rendered a civil judgment which clearly indicates how to determine whether patent infringement is intentional or whether it results from negligence. In the case discussed, the defendant had participated in an exhibition together with the plaintiff and had thus become aware of the patented products. The IPC found that this was sufficient to adopt the plaintiff's allegation that the defendant's infringement of the patent in dispute had been intentional.
In 2018 the Taiwan-Japan Relations Association and the Japan-Taiwan Exchange Association signed a memorandum of understanding on the exchange of patent file wrappers to facilitate the sharing of file histories and other relevant information sought by applicants and patent examiners between Taiwan and Japan. The Taiwan Intellectual Property Office recently announced the pilot of a shared platform for accessing patent examination documents.
The Taiwan Intellectual Property Office recently published draft amendments to certain articles of the Patent Act which substantially revise the litigation procedures for patent cases and consolidate the appeal levels. The amendments amount to the biggest change to the Patent Act in recent years. Patent owners and related professionals should pay close attention to the changes to the act and related laws and regulations to understand how their rights and interests may be affected.
Article 40 of the Plant Variety and Plant Seed Act provides legal remedies for plant variety rights holders or exclusive licensees whose rights have been infringed. The Taiwan Intellectual Property Court recently rendered a civil judgment that specifically indicates how to determine whether an allegedly infringing plant is an infringing variety.
In 2019 the new Patent Act took effect, setting stricter time limits for parties to propose attack and defence methods in invalidation procedures to avoid delays in and improve the effectiveness of invalidation examinations. Following public confusion, the Taiwan Intellectual Property Office recently issued a Q&A on the examination practices of the Patent Act, to provide more detailed guidance on the interpretation and application of relevant provisions in specific cases. This article summarises the guidance.
The Taiwan Intellectual Property Office recently announced a patent examination pilot programme for start-ups, effective 1 January 2021. Under the programme, start-ups with research and development capabilities will experience a more active and positive examination process which will enable them to better improve their patent portfolios.
In a recent case, the IP Court adopted a negative stance on the issue of whether the appearance design of drugs may be regarded as trade dress of goods or services and thus be subject to Article 22(1)(1) of the Fair Trade Act. The drugs involved in this case were prescription drugs that can be obtained only with a physician's prescription. It remains to be seen whether there is any difference in legal application with respect to non-prescription drugs.
Since the inception of laid-open patent applications, the Taiwan Intellectual Property Office (TIPO) has allowed any party to provide relevant materials to support rejections of subject patent applications before the examination decision is rendered. Having sustained the foregoing provision for several years, TIPO recently amended the rule by deleting the original restriction that supporting materials may be submitted only after a patent application is laid open.
In 2012 Taiwan and Japan signed a patent prosecution highway (PPH) programme to better facilitate patent cooperation. In 2014 the programme (known as the 'PPH MOTTAINAI') was amended to relax a restriction which meant that only search and examination results of the office of first filing were permissible as a reference for the office of second filing. On 1 May 2020 the PPH MOTTAINAI became permanently effective.
In disputes relating to the ownership of patent rights, rights holders can petition for a pre-final enforcement order to preserve their rights before a judgment becomes final and irrevocable in addition to requesting the title transfer recordation of the disputed patent. However, in a recent Supreme Court ruling, it was explicitly stated that the pre-final enforcement of a patent transfer recordation was unnecessary and that the enforcement court will reject any such related petitions.
The Intellectual Property Court recently addressed the knowledge and technical level of a person having ordinary skill in the art (PHOSITA). In a decision which diverged from a Supreme Administrative Court judgment, the Intellectual Property Court declared that the examination of a PHOSITA's knowledge and technical level is considered substantial only when the parties raise a claim thereon and if such a determination would affect the judgment.
In patent disputes, claim construction and a person having ordinary skill in the art determination often become the focus of the parties' arguments. Based on the principle of good faith and the doctrine of estoppel, it is common for one party to quote statements made by the other party outside the litigation proceedings as a basis for interpreting the claims or identifying ordinary skill. The Supreme Administrative Court recently assessed whether such statements may be used as evidence.
To avoid repeated administrative litigation procedures, Article 33(1) of the Intellectual Property Case Adjudication Act stipulates that the IP Court must consider any new evidence submitted on the same invalidation reasons before the end of the oral debate proceedings. Since the act came into effect in 2008, this article has remained unquestioned. However, the IP Court loosely construed it in a recent judgment.
In order to provide full reports on news events, it is often inevitable that the works of others will be used. Should relevant laws be unable to empower journalists to claim fair use under certain circumstances, news reports may fail to be conducive to the formation of public opinion or fail to agree with the main purpose of copyright protection. Exemption regulations concerning fair use in news reports can be found in the Copyright Act.
According to the Supreme Administrative Court, when conclusions of a technical evaluation report differ from invalidation actions, the IP Court has the authority to determine patent validity. In accordance with the System of Administrative Litigation Events, if the IP Court holds that evidence and materials provided by the parties have successfully resolved any patent validity disputes, its judgment should not be found to contravene the laws and regulations.
Although a patent invalidation action is considered to be a type of public review system, it has the legal nature of a private rights dispute in general. Therefore, the patent invalidation petitioner bears the burden of proof to provide reasons for the patent invalidation request. However, when and to what extent should the IP Office conduct ex officio investigations and explore evidence not provided by the patent invalidation petitioner?
The non-obviousness of a claimed invention is generally determined by investigating whether a person having ordinary skill in the art is motivated to combine the disclosure of said prior art references and can easily accomplish the claimed invention. However, there is no specific regulation in Taiwan as to whether there is any priority in the application of said prior art references.
The copyright of a work is vested in its author. If another person wishes to use that work, he or she must obtain the relevant rights or licence from the author. If during the lifespan of the work's copyright it becomes unclear who the author is, or if the author is dead and his or her successor is unclear as to who the original author was, how may a third party proceed to use the copyright?
Although an alleged infringer can lodge a cancellation action with the Taiwan Intellectual Property Office (TIPO) to invalidate the patent at issue, it normally takes more than one year for the TIPO to conduct an examination. Meanwhile, the alleged infringer is unable to clear its name. In such cases, the alleged infringer may consider filing a lawsuit with the IP Court against the patent owner, asking the court to grant a declaratory judgment.
An accused party which receives an unfavourable binding judgment can file for a retrial if the patent at issue is revoked through the cancellation action. In a recent case, the IP Court declined to investigate the defendant's patent invalidity arguments because such arguments had not been advanced until appeal. However, the IP Court's handling of the case was criticised by the Supreme Court and hence the accused party's filing for retrial was approved.
In a patent infringement lawsuit filed by Toshiba Corporation against four Taiwanese companies, the IP Court rendered an interim judgment holding that three NAND flash memory products manufactured and sold by the defendants had infringed Toshiba's patents. The IP Court also confirmed that Toshiba's patents should be valid. The court is in the process of determining damages.
If a work is the creation of an author and not the result of plagiarism, it is deemed original and is entitled to protection regardless of whether it resembles the work of another person. In view of the legislative spirit of protecting copyright, it is justified for judicial practice to consider 'indirect contact' as a requirement for determining infringement. However, in determining the originality of a work, the question of whether the criteria of copyright infringement should be applied in kind remains up for discussion.
The IP Court recently considered whether copyrights were infringed due to adaptations of computer programs. The court determined that even where software code has been modified based on the work of others, if the modification and modified functions have resulted in a significant distinction from the original work, the modified work is considered an independent work and thus does not infringe the copyright of the preceding work.
In administrative lawsuits regarding patent validity disputes, scholars often consider that the principle of disposition should be adopted and that the parties concerned should bear the burden of proof for their claims, since such disputes are private by nature and involve fewer pro bono characteristics. Under the Patent Act, the cancellation petitioner must present the cancellation reasons and evidence.
In practice, the IP Court allows patentees to apply for a post-grant amendment during the proceedings. If the post-grant amendment is deemed acceptable, the IP Court will decide on the patent validity and infringement issues based on the amended scope of the patent claim. However, there is some debate over whether an application for post-grant amendment after a patentee has filed a complaint constitutes an amendment of the statement of claim.
A recent Supreme Administrative Court has clarified that explicit disclosure in the citation document is not the only evidence that can be used to determine novelty of a claimed invention. Determination can also include the undefined but naturally inherited or existing content in the citation document. However, only when the implicit disclosure discloses the technical features of the invention at issue can it be determined that the patent at issue lacks novelty.
The IP Court recently delivered a judgment regarding copyright infringement of circuit layouts. The court held that in investigating whether the circuit layout of an actual product constitutes copyright infringement, the comparison method used for pictorial and graphical works should be employed to determine whether the defendant has reproduced the plaintiff's circuit diagram and layout.
Concepts for inventions provided by a company may be insufficient to prove that an employee's research results are an invention produced in the course of their duties. In the event of doubt regarding rights ownership for research work conducted by an employee it is important to ask whether the work was carried out during the performance of the employee's duties and whether any agreements had been made between parties.
When a patent application is made fraudulently by another person who pretends to be the inventor, the court must determine the true inventor based on the facts. If the court finds the content of the invention as revealed in the evidence put forward by the individual claiming to be the inventor to be substantively identical or similar to the invention, it will deem the individual which offers such evidence to be the true inventor.
After a patent has been granted by the patent office, anyone who considers it to lack novelty or inventive step can file a cancellation action along with the relevant prior art references. Both the Supreme Administrative Court and the IP Court appear to accept that the patent office can adopt different opinions in a patent application and cancellation action.
Provisional attachment and evidence preservation are normally administered based on the confidentiality principle, to prevent the infringer from transferring assets or hiding important evidence beforehand. However, maintaining confidentiality can be complicated if the rights holder is forced to appeal a failed application for such preventive measures, as the appeal court will often be obliged to notify the infringer to appear in court.
In the event of doubt with respect to the ownership of a patent resulting from research undertaken by an employee during his or her tenure, the Supreme Court recently considered the question of whether such research had been carried out "in the course of performing the employee's duties" and whether any special agreement had been concluded between the parties.
The Supreme Administrative Court recently revoked and remanded an original judgment of the IP Court because the remanded judgment gave a completely different interpretation of the characteristics and purposes of the disputed patent from those of previous judgments.
The draft amendment of the Patent Act has been passed by the Legislative Yuan. This latest amendment adds four new articles which address patent border protective measures. In the future, if a patentee suspects that imported items are infringing its patent right, it can provide a security bond to Customs for the seizure of such items for the protection of its patent.
The Intellectual Property Court recently issued a ruling whereby the licensor was still entitled to royalty claims from the licensee pursuant to the original contract, even after the early termination of the licence. Whether during the contract negotiation process the contracting parties actively express or passively fail to express their intentions may play a critical role in a later interpretation of the contract's terms.
The Intellectual Property Case Adjudication Act stipulates that if a litigant (usually a defendant) claims patent invalidity during a litigation, the court can ask the Taiwan Intellectual Property Office to act as an intervention party to the litigation, in order for the latter to express its views on the validity of the patent.
The new Patent Act is regarded as the largest and most complicated amendment of the past decade – particularly regarding changes in patent prosecution procedures. The time periods for submitting the two supporting documents have been changed to "within 16 months after the earliest priority date", starting from "the earliest priority date". However, the claim of priority is not necessarily fixed.
The Patent Act stipulates that anyone who manufactures, offers to sell, sells, uses or imports patented goods will be liable for infringement. Theoretically, as long as a patent owner can prove that a direct infringer and direct infringing conduct exists, and that there is causation between the indirect infringer's contribution and the result of infringement, the accused indirect infringer will be held responsible for joint infringement.
Awareness of IP rights protection has been rising in recent years. Rights holders and importers, exporters, manufacturers or sellers of various products should pay close attention to changes in customs border measures and institute appropriate internal guidelines for potential scenarios.
Although the IP Case Adjudication Act grants civil courts the power to judge patent validity of their own accord, it is silent on how to handle the application of claim amendment. The IP Court has been inconsistent in its dealings with the application of patent claim amendment. An examination of recent IP Court judgments highlights several different approaches that it has taken in this area.
The IP Court recently ruled that DVD-ROM products produced by Abico FS Co Ltd infringed one of Toshiba Corporation's invention patents. The court ruled that Abico must not only pay Toshiba damages, but also refrain from manufacturing, offering for sale, selling, using or importing the infringing products. All infringing DVD-ROM products must be retrieved and destroyed.
Taiwan's patent system allows for the use of means-plus-function or step-plus-function language for claim limitations. Infringers occasionally employ Article 18(8) of the enforcement rules to the Patent Act to argue that a patent should be invalidated for not conforming to the 'definiteness' requirement under Article 26(2) of the act. The IP Court and the Supreme Court recently considered this issue.
The Code of Civil Procedure does not offer clear guidance as to whether attorneys' fees incurred in the appeal procedure should be considered part of the injury suffered. This issue was recently considered by the Supreme Court in Tai-Shang-1505. The court held that the attorneys' fees for the third-instance appeal could not be considered part of the damages caused by the preliminary injunction.
The draft amendments to the Patent Act are intended to reject the principle whereby partially valid patents are not recognised by the Taiwan Intellectual Property Office. Even though the amendments are yet to be implemented, it appears that the Supreme Administrative Court has already anticipated this development and adjusted its practice to reflect the pending change in the act.
In its recent case law, the Supreme Court has articulated an important procedural requirement concerning the determination of patent validity by the IP Court. When the IP Court has a different view from the TIPO on the validity of a patent, it should either disclose its opinion to the parties and allow them the opportunity to present arguments, or alternatively, solicit the opinion of the TIPO by requiring its participation in the litigation.
Following its seminar on trial models in March 2010, aiming to further improve trial quality and gain full trust in its judgments, the IP Court held another seminar on November 5 2010. In addition to eliciting comments and suggestions, the court reported a draft revision, which is currently under consideration. The court will seek further public feedback and conduct internal discussions before announcing a final version.