Patent invalidation actions in Taiwan were initially examined based on the written documentation or evidence submitted. On 30 March 2018 the Taiwan Intellectual Property Office (TIPO) introduced a hearing procedure for patent invalidation cases to let the parties fully express their opinions during the examination of patent invalidation cases and to simplify the procedures for subsequent administrative remedies. On 5 August 2019 – within the first year of the implementation of the hearing invalidation system – TIPO announced the implementation of amendments to the Rules for Holding Hearings on Patent Invalidation Cases (hereinafter referred to as the '2019 version') after referring to the hearings in practice and collecting public comments.
On 8 February 2021 TIPO announced the implementation of further amendments to the Rules for Holding Hearings on Patent Invalidation Cases (hereinafter referred to as the '2021 version'). Since the 2019 version is more comprehensive than the rules implemented in 2018, the 2021 version makes only minor adjustments, including the following.
Emphasis on deadlines for document or evidence submission
Point 4(1) of the 2021 version states as follows:
before the announcement of the hearing, TIPO shall forward the relevant documents or evidence submitted legitimately by either party to the other party; from the announcement of the hearing to the 10th day of the hearing date, either party can only submit written statements or statements on the import of the argument according to the matters listed in the notice of the hearing and must send them to the other party simultaneously.
While Point 9(9) of the 2019 version also set a deadline for document submission, the 2021 version moves content concerning deadlines to Point 4(1). Therefore, both of the parties which attend a hearing should pay more attention to the deadline for document or evidence submission.
Restrictions on content of documents submitted by invalidation petitioners
Point 4(2) of the 2021 version states as follows:
the written statements or debates for the hearing submitted by the invalidation petitioner that change the provisions or specific facts or the relationship between the respective specific facts and the evidence asserted originally by the invalidation action shall not be considered in accordance with the Patent Act.
Hearing procedures aim to give the parties an opportunity to sufficiently state and exchange their opinions. If the invalidation petitioner presents new facts or evidence in addition to the original reasons for the invalidation request, the other party may be unable to reply. This is contrary to the intention of a hearing procedure because the other party may not be able to fully express its opinions. Therefore, the 2021 version imposes restrictions on the content of the documents submitted by the invalidation requester before the hearing.
Use of foreign languages in hearings
Point 14 of the 2021 version states that: "[M]andarin shall be the language used at the hearing. The parties using languages other than Mandarin may file a request with TIPO for an interpreter."
The people who participate in the hearing procedure may include the parties themselves, any interested parties, agents and moderators. In response to the trend of internationalisation, participants in the hearing process can state their opinions in a foreign language and TIPO translators will perform a translation. This greatly facilitates the participation of foreign-language speakers in the hearing procedure.
TIPO continues to amend the Programme for Hearing Patent Invalidation Cases step by step in accordance with practice to establish a more comprehensive examination process. The public should look forward to a more comprehensive examination quality and a more credible examination decision.
