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Supreme Administrative Court: Courts Can Discover the Secondary Evidence Not Provided by Invalidation Petitioners on Their Authority

Hsiu-Ru Chien/Shih-I Wu

In Taiwan, the Principle of Disposition is applied in both administrative and civil lawsuits with respect to the scope of subject matter of litigation and the initiation and withdrawal of the litigation.  However, the investigation mode in administrative lawsuits and civil lawsuits is different.  In civil lawsuits, the Principle of Party Presentation is adopted, and the litigation material forming the foundation of court decisions is limited to the statements and claims of the parties concerned.  On the other hand, administrative lawsuits mainly follows the Principle of Authority Investigation according to paragraph 1 of Article 125 and Article 133 of the Administrative Litigation Act; the court can still access relevant information on its authority even though the parties concerned do not provide it, and the court's such authority would not be bound by the scope of the allegation which have been made by the parties.
However, regarding administrative lawsuits over patent validity disputes, both scholars view and practical insights often consider that the Principle of Disposition should be adopted and the parties concerned should take the burden of proof for their claims, since such disputes are private disputes by nature and involve less pro bono characteristics. The Patent Act, even being amended several times in the past, always provides that the cancellation petitioner shall present the cancellation reasons and evidence (for example, Article 73 of the current Patent Act).. The Supreme Administrative Court Judgment No. 1999-Pan-3748 clearly stated that, "the Principle of Disposition applies to patent disputes, and the parties concerned should bear the burden of proof."  Its Judgment No.2011-Pan-952 further explained, "the Principle of Disposition is adopted in patent invalidation cases, and the court should examine the case based on the reasons and evidence provided by the invalidation petitioner," Moreover, the Supreme Administrative Court  Judgment No. 2013-Pan-385 also elaborated that the administrative court can only "investigate on its authority" the facts and evidence "within the scope of the known facts, the claims of the parties concerned, and information in the case files.".
Based on the above judicial practice insights, in the administrative litigation over patent validity disputes (i.e., the cancellation action under the current Patent Act), evidence should be submitted by the parties concerned, and the administrative court can only conduct investigation by its authority within the scope of the claims made by the parties concerned. The administrative court shall not explore and uncover by itself the facts and evidence that are not claimed or petitioned by the parties concerned and thus have not known by the court.  However, the Supreme Administrative Court seems to have revised this view in its Judgment No. 2016-Pan-41 of January 28, 2016 to affirm that the administrative court may investigate solely on its authority the secondary or supplementary evidence relating to the evidence provided by the parties concerned.
The reason for this judgement: "In a patent cancellation case, to judge whether the patent at issue should be invalidated, the administrative court should, based on the Principle of Disposition, review only the reasons for invalidation claimed by the cancellation petitioner and the evidence he/she provides.  However, this does not mean that, in addition to the invalidation evidence, the court cannot investigate the secondary evidence associated with the facts on the same ground.  This is because an administrative litigation on patent disputes has a pro bono benefit to promote industry development, and private benefits are not the sole concern in determining invalidation of a patent.  The secondary evidence can be used to reinforce the admissibility and credibility of the existed evidence.  When the credibility of evidence provided by the cancellation petitioner cannot convince the court to obtain defined conviction, the court can conduct an ex officio investigation on the secondary evidence relating to the invalidation evidence to discover the truth."
In that case, the patent at issue is directed to a manufacturing method of calcium silicate board, comprising ten steps: raw materials waste silk, combed cotton, convolution cotton conveying, needle mat, convolution, gluing, compression forming, cutting, and packaging.  However, in the prior art reference raised by the cancellation petitioner, only six steps: raw material, combined cotton, needle mat, gluing, compression forming, and cutting are disclosed, and no relevant information of the other four steps is mentioned. The original court, the Intellectual Property Court, investigated related prior art based on its authority, found out two secondary evidence not provided by the concerned parties, and determined that said four steps not disclosed in the prior art reference belong to common knowledge clearly known to the public in that field at the time when the patent was filed based on said secondary evidence , thereby to reach the conclusion that the patent at issue lacks an inventive step.
Although the patentee of this case appealed to the Supreme Administrative Court, the Supreme Administrative Court still affirmed that it is legal for the original court to investigate evidence by its authority from the viewpoint of professional textile knowledge within the scope of the same cancellation evidence and to disclose its primary opinion in advance for the parties concerned to present their opinions according to Article 8 of the Intellectual Property Case Adjudication Act applying mutatis mutandis to Article 34 of the same act.
The above opinions show that the scope of administrative investigation for patent invalidation cases has been expanded in law practice.  For secondary evidence relating to the facts on the same ground, although the parties concerned do not provide it, the administrative court can still investigate such evidence according to its authority to determine if it is common knowledge known to the public in the field at the time when the patent was filed.  However, the evidence found must be disclosed to the parties concerned in advance for debate, and such evidence can then serve as a foundation of decision.  However, if this view becomes a common practice of the administrative courts for proceeding patent invalidation cases, this seems contrary to the nature of private disputes for patent invalidation cases.  If the court always takes its initiative finding new evidence which is able to invalidate the patent at issue and employ such evidence in the name of "common knowledge" so as to avoid violating the provision under the Patent Act concerning that the cancellation petitioner shall present the cancellation evidence, the balance under the Principle of Equality of Arms between the cancellation petitioner and patentee may therefore be interfered, and this also may make the administrative authority loses its authority in "first-tier examination and decision". The suitability seems questionable.