Newsletter
Amendment to “Rules for Hearings on Patent Invalidation Cases” in 2021
In the early years, patent invalidation actions in Taiwan were examined based on written documentation/evidence submitted. In order to let the parties fully express their opinions during the examination of patent invalidation cases, and to simplify the procedures for subsequent administrative remedies, the Taiwan Intellectual Property Office (TIPO) introduced a hearing procedure for the patent invalidation cases on March 30, 2018. During the first year after the implementation of the hearing invalidation system, the TIPO announced the implementation of the first amended "Rules for Holding Hearings on Patent Invalidation Cases" (hereinafter referred to as “2019 Version”) on August 5, 2019, after referring to the hearings in practice and collecting public comments.
This year (2021), the TIPO amended the “Rules for Holding Hearings on Patent Invalidation Cases” again, and announced the implementation of the amended “Rules for Holding Hearings on Patent Invalidation Cases” (hereinafter referred to as “2021 Version) on February 8, 2021. Since the 2019 Version is more comprehensive than the Rules first implemented in 2018, the 2021 Version only makes minor adjustments, including:
(1) Emphasis on the deadline for submission of documents/evidence before the hearing (Point 4.1 of the 2021 Version): "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 sets a deadline for document submission, the 2021 Version moves content concerning deadline to Point 4.1, and thus both parties attending the hearing should pay more attention to the documents/evidence submission deadline;
(2) Restriction of the content of the documents submitted by the invalidation petitioner before the hearing (Point 4.2 of the 2021 Version): "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 evidences in addition to the original reasons for invalidation request, the other party may be unable to reply, which is obviously contrary to the intention of a hearing procedure because the other party may not be able to express opinions fully. Therefore, the 2021 Version imposes restrictions on the content of the documents submitted by the invalidation requester before the hearing;
(3) Use of foreign languages in the hearing process (Point 14 of the 2021 Version): "mandarin 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 persons participating in the hearing procedure may include parties, interested parties, agents, and moderators. In response to the trend of internationalization, participants in the hearing process can state their opinions in foreign language, and the translation will be carried out by translators from the TIPO, which greatly increases the convenience for foreign language speakers to participate in the hearing procedure.
In order to establish a more comprehensive examination process, the TIPO continues to amend the Program for Hearing Patent Invalidation Cases step by step in accordance with practice. The public should be able to look forward to a more comprehensive examination quality and a more credible examination decision.