In Taiwan, any person can request an invalidation against a granted patent so that the patent right will be revoked if a decision is confirmed. The patent invalidation examination by Taiwan Intellectual Property Office (TIPO) was mainly based on paper documents as submitted, despite that an interview might be conducted if necessary. Pursuant to Taiwan Administrative Procedure Act, TIPO has now provided hearing measure on patent invalidation cases. The measure started from March 31, 2018 and the highlights are as follows.
- A hearing can be requested by an involved party (demandant or demandee/patentee) via a written application. The hearing shall be held with the prior consent of the opposite party after TIPO has determined the necessity of said hearing. Alternatively, a hearing can be held ex officio by TIPO.
- A notice of hearing will be sent to each of the involved parties and also publicly announced by TIPO, not later than 30 days before the date set for hearing.
- An interested party can request to attend the hearing by filing evidencing documents within 20 days after the hearing announcement, or members of the public can observe the hearing by filing a request within 10 days prior to the date of hearing.
- In principle, a hearing proceeding is open to public. However, if the involved party deems the disclosure of said hearing is in violation of public interest or poses a risk to their benefits, a request accompanied by the reasons not to open the hearing, can be filed within 10 days upon receipt of a hearing notice. TIPO will then decide whether the hearing will be open in whole or in part.
- The involved party may present new arguments or exhibits within 10 days upon the service of a hearing notice, and deliver the documents to the opposite party at the same time.
- A hearing proceeding and collegiate judgement will be carried out by three or more examiners.
- A hearing record shall be made in situ, and signed by the examiners, involved parties, interested party, etc., and then kept in the file.
- If the involved party feels dissatisfied with an administrative decision made by TIPO after the hearing, an appeal proceeding shall be exempt from the administrative remedy process, so that an administrative suit can be directly lodged against said decision.
In summary, the hearing measure enables both involved parties to make oral arguments on their assertions, evidence and legal interpretation through debate, and help the examiners to clarify the dispute issues before rendering a decision. It will also improve the transparency and fairness of the examination system, as well as simplify the administrative remedy proceeding for Taiwan patent invalidation cases.
