I. Purpose
On March 30, 2018, the Taiwan Intellectual Property Office (TIPO) announced the program for hearing patent invalidation. The purpose of the hearing is to provide an opportunity for the parties of the invalidation in dispute to state opinions about the cause, evidence and legal opinions on the issues and interrogate with each other. This procedure can help the examiner of the invalidation to consider all the facts, evidence and results of the interrogation, and find the facts based on rules of logic and experience and make a decision through his/her free evaluation.
II. Term Definition
1. “Party” means the petitioner or respondent in an invalidation proceeding.
2. “Interested Party” means any one of the following parties other than the Party:
(1) The party involved in a lawsuit related to the patent at issue.
(2) The licensee or pledgee of the patent at issue.
(3) Those others whose rights or interests would be affected by the existence or non-existence of patent rights of the patent at issue.
3. “Agent” means the patent attorney, patent agent or lawyer appointed by the Party or the Interested Party.
4. “Presiding Examiner” means the individual who is appointed from the examiners of the invalidation.
III. Holding a Hearing
1. If a Party of the invalidation at issue asserts that there is a need to make mutual interrogation or raise questions to the witnesses or appraisers, the Party can petition for a hearing by submitting a petition form with arguments at the TIPO. If the other Party agrees and the TIPO holds that it is necessary to hold a hearing, the hearing will be held.
2. If the TIPO holds that it is necessary to hold a hearing, it can hold the hearing ex officio.
3. In order to facilitate the hearing, the TIPO may, depending on the complexity of the case, notify the Parties to hold a preparatory hearing for the following matters: (1) discussing the procedure of the hearing; (2) clarifying the eligibility of the instrument and evidence; (3) clarifying the issues; (4) other matters related to the hearing.
4. If a Party petitions for raising questions to the witness or the appraiser, the TIPO shall notify the witness or the appraiser before the hearing if necessary.
5. If a Party petitions for rescheduling, it shall, at the latest 10 days before the date of the scheduled hearing period, submit the petition in writing or electronically with the statements. If the statements are justified, the TIPO may agree to reschedule the hearing.
6. If a Party believes that the publication of the hearing procedure is obviously contrary to the public interests, or that is likely to cause significant damage to the interests of the Party, it shall, within 10 days after receiving the notice of the hearing, petition in writing or electronically for a non-public hearing.
7. If the Interested Party intends to attend the hearing, it shall, within 20 days after the announcement of the hearing, petition to the TIPO for attending the hearing with the relevant supporting documents.
8. The TIPO may change the date of the hearing or cancel the hearing ex officio. The parties shall be re-notified of change of the hearing date which shall be re-announced.
IV. Reply of not Holding the Hearing
For a hearing petition, if the TIPO holds that the arguments are not related to the case or if the case is clear and there is no need for a hearing, the TIPO shall notify the petitioner or specify the reasons for not holding the hearing in the decision.
V. Hearing procedure
1. In addition to the Examiner, the Parties or their Agents and the involved witnesses and appraisers, the hearings shall be open only to those who petition in advance and are permitted to attend or the general public who is permitted to attend. If the Party is a legal person, it may appoint its employee to attend the hearing; the Agent may appoint another person having professional knowledge with respect to the invalidation to attend the hearing.
2. The hearing procedure is public in principle. However, if the Party has petitioned for a non-public hearing before the hearing or asserts that the publication of the relevant documents and evidence in the hearing procedure is likely to cause significant damage to its interests, the Presiding Examiner may decide that all or a part of the hearing procedure is non-public.
3. The hearing shall be conducted by a panel of more than 3 examiners. When the hearing is conducted, the examiners shall attend the hearing
4. If the Party wishes to submit arguments or evidence, it shall submit them in writing within 10 days after the hearing notice is served, and at the same time send them by the Party itself to the other Party.
5. During the hearing procedure, if the invalidating Party has an intention to withdraw the invalidation, the Presiding Examiner may suspend the hearing procedure based on the rules described in Section VI of this article about suspending the hearing procedure.
6. When the Presiding Examiner believes that the Parties have fully interrogated with each other, s/he will announce the end of the hearing after the Parties have made final statements. If the Parties could not fully interrogate with each other during the session, the Presiding Examiner should decide the date and place for continuing the hearing before the end of the hearing period.
7. During the hearing procedure, the Party may waive some of the assertions or arguments. The above-mentioned waived assertions or arguments will be recorded in the hearing record and will not be examined.
8. The Presiding Examiner shall notify the Parties that if any Party is dissatisfied with the administrative disposition rendered based on the hearing, according to Article 109 of the Administrative Procedure Law, the administrative relief procedures will not include the appeal procedure at the Appeal Review Committee of the Ministry of Economic Affairs, but instead, the administrative litigation shall be directly initiated. See Article 109 of the Administrative Procedure Law (“In the case of dissatisfaction having been raised against the administrative disposition rendered pursuant to the preceding article [note: i.e., hearing procedure], no administrative appeal or other prior proceedings is required for the purpose of institution of an administrative remedial proceeding in relation thereto.”)
VI. Suspending the Hearing Procedure
1. The circumstances of suspending the hearing procedure: the Presiding Examiner may suspend the hearing procedure according to a petition or ex officio when the invalidating Party has an intention to withdraw the invalidation or submits evidence which will have a significant impact on the outcome of the invalidation at issue.
2. For the invalidation decision made based on the suspension of the hearing procedure, the provisions of Article 109 of the Administrative Procedure Law shall not apply.
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