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Hearings for patent invalidation cases

by Betty Chen

In Taiwan, patent invalidation proceedings usually involve the submission of written pleadings and defenses, as well as the submission of evidence. In March 2018, the Taiwan Intellectual Property Office (TIPO) implemented new guidelines for patent invalidation cases and introduced a hearing system into the process. The new system provides the opportunity for both parties to debate their position orally and also help TIPO to clarify legal issues.

Hearings for patent invalidation cases can be requested by either party. Alternatively, the TIPO has the discretion to request a hearing for a patent invalidation case. In general, the hearing will be open to the public; however, if either party believes it is inappropriate for the hearing to be open to the public, it may file a request to hold the hearing in private, providing its reasons to the TIPO. The hearing panel will consist of three examiners. During the hearing, both parties will have the opportunity to present oral arguments, and to question witnesses or appraisers. In past cases the invalidation decisions were rendered within one to two months after the hearing. If the party disagrees with the TIPO’s decision, they may file an appeal with the IP Court.

Prior to the implementation of the hearing system for patent invalidation cases, a proceeding would typically take about 15 months before a decision was rendered by the TIPO. The TIPO has held twelve patent invalidation hearings since the implementation of the hearing system. Notably, for all of these cases, a decision was rendered by the TIPO within one year. Therefore, requesting a hearing for a patent invalidation case may significantly reduce the duration of patent invalidation proceedings.

For more information regarding patents in Taiwan please contact Peter Dernbach at pdernbach@winklerpartners.com and Betty Chen at betty@winklerpartners.com.

 

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