Since the Intellectual Property Court's formal establishment in July 2008, there had been numerous discussions and recommendations with respect to its patent infringement civil litigation procedure. Despite the above, the Intellectual Property Court has not apparently made any major adjustments in such procedures. On March 31, 2014, President Ter-Chao Lee (former Division-Chief Judge) of the Intellectual Property Court said during a keynote speech entitled "Revolution of Intellectual Property Right Trials (Patents)" that a new set of patent infringement civil litigation procedures would be adopted.  On December 27, 2014, Division-Chief Judge Huei-ju Tsai gave an explanation with respect to the court's plan for the new procedures (hereinafter called the "New Trial Rules") during a seminar involving businesses, the government and academic circles. There are significant differences between the New Trial Rules and the existing procedure. The main differences are set out below:

 

 

There had been criticisms with regard to non-disclosure of the TEO's technical report and the presentation of such a report by the TEO to the presiding judge at the commencement of the initial hearing, thus causing the presiding judge to publish his/her holdings regarding the validity of the patent even before the parties present any arguments. Under the new trial rules, it is proposed that during the four-month period between the commencement of litigation and the first hearing, the TEO should produce a table of comparison for the claims of the parties solely with respect to the validity of the patent and the disputed issues relating to the alleged infringement. No conclusions from such a comparison would be given.

 

While the aforesaid report of the TEO would remain unavailable to the parties. However, the court may, pursuant to the exceptions under Paragraph 2, Article 16 of the Intellectual Property Rights Cases Adjudication Rules as amended on June 6, 2014, give the parties an opportunity for debate upon "the technical and professional knowledge provided by the TEO," before using the aforesaid as the basis for its decision.

 

 

There were views concerning the court exclusively relying on the TEO's view, as this would result in room for bias or error. Under the New Trial Rules, for major or complex cases, comparison involving in several technology fields, retrial cases and the decisions of the IP Court contradictory to the decisions of the cancellation actions before the IPO or the decisions of the administrative litigations, the court may form a collegiate bench of three Technical Examiners to review relevant technical issues.

 

The greatest number of complaints in past practice concerns an excessive number of cases being decided on the basis of the evidence regarding patent invalidity which the defendant did not present or submit. Such decisions have been quite common, even until recently. In this regard, the New Trial Rules now formally require the court to make its ruling on the patent's validity solely on the basis of the parties' claims and evidence. It will no longer investigate evidence the parties do not present or submit. In other word it will strictly follow the adversarial system.

 

There was no consistent standard with regard to the burden of proof where a party claims invalidity of patent. Under the New Trial Rules, a party that so claims should bear the burden of proof. Furthermore, the standard of proof shall be "Clear and Convincing." The court should rule a patent to be valid if there is insufficient evidence to prove otherwise.

 

With respect to the standard for determination of the inventive step, in the past, patents were often ruled to be invalid on general grounds such as "it can be easily accomplished by the person having ordinary skill in the art based on prior art references." The New Trial Rules have taken into consideration the KSR case in the United States. Thus when determining the inventive step, the court should consider whether or not the prior art references teach, suggest or motivate the person having ordinary skill in the art combine the prior art references to accomplish the patent at dispute. To determine the inventive step, the court should take the into consideration whether the patent at issue can achieve unexpected effect, resolve long-term problems, overcome technical discrimination and achieve commercial success.

 

It has been noted by the public that given the presence of the TEO, the court often adopted a conservative approach when determining whether to summon expert witnesses. Under the New Trial Rules, a list of 100 experts with whom the court will consult will be published on the Internet. The court will respect the parties' application for summoning expert witnesses. It is hoped that in addition to the views of expert witnesses, the judges can also take into consideration those of consulting experts. This will prevent the court from over-reliance on the views of the TEO such as to make erroneous decisions.

 

In past practices the parties often speculated on the court's holdings with respect to patent infringement and validity of patents by way of the order in which the court dealt with disputed issues and progress thereof (e.g. if the court had not heard arguments on the issue of damages compensation, the parties concerned would guess that the court had ruled against the patentee on the question of patent infringement and/or the validity of the patent). The New Trial Rules will apply Article 383 of the Code of Civil Procedure regarding interlocutory judgments that if the issues in patent infringement or validity of patent is mature for decision, the court may render an interlocutory judgment. The aim is to foster settlement between the parties.