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What is the forum for the conduct of patent litigation?
Taiwan’s Intellectual Property and Commercial Court (IP Court) has exclusive jurisdiction over the first and second instances of patent infringement litigation. The IP Court was established in 2008 as a specialised court to hear all cases relevant to the IP rights prescribed in the Patent Act, the Trademark Act, the Copyright Act, the Optical Disk Act, the Trade Secrets Act, the Integrated Circuit Layout Protection Act, the Plant Variety and Plant Seed Act and the FTA. In 2021, the Court was restructured as the Intellectual Property and Commercial Court to adjudicate major business disputes as well.
The IP Court is in charge of three prongs of IP litigation, including administrative, civil and criminal. For administrative litigation in IP matters, the IP Court is the court of the first instance, and the Supreme Administrative Court is the court of the second and final instance. For civil litigation in IP matters, the IP Court is the court of the first (except for those situations where the parties have agreed on a particular district court on the ordinary court system to be the first-instance court over the disputes between the parties) and second instances, and the Supreme Court is the court of the third and final instance. For criminal litigation, the district courts (on the ordinary court system) hear the first instance with the exception of criminal trade secret litigation, where the IP Court is the court of the first instance. For all criminal litigation involving IP matters, the IP Court is the court of the second instance, and the Supreme Court is the court of the third and final instance.
Given the fact that the IP cases involve various technical issues, most IP Court judges have experience and backgrounds related to IP matters. The IP Court also has examination officers who provide technical analysis for reference in trials and assist the judges to investigate evidence and to adjudicate technical issues.
The IP Court judges determine the validity of IP rights in the civil infringement proceedings, but the effect of such decisions only binds the parties in the same civil matter rather than the public.
Finally, there will be no jury trial proceedings for IP-related litigation in Taiwan; only bench trial proceedings will be applicable to IP-related litigation.
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What is the typical timeline and form of first instance patent litigation proceedings?
In most cases, there are separate hearings held to examine issues of claim construction, invalidity, infringement, and damages. Typically, the parties are required to exchange written briefs prior to each hearing. The IP Court reviews the technical issues (namely, validity and infringement issues) with the support of the technical examination officers. Normally, the proceedings for patent infringement litigation take one to two years to conclude at the first instance.
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Can interim and final decisions in patent cases be appealed?
The final decision of the first instance in a patent infringement litigation made by one judge at the IP Court can be appealed unconditionally to a panel of three judges of the same court. The appellate decision made by this panel of three judges can in turn be appealed to the Supreme Court, provided that the value of the claim exceeds NT$ 1.5 million (approximately US$ 46279.17).
It usually takes approximately one to one and a half years to conclude the proceeding at the second instance and six months to one year to conclude the proceeding at the third instance.
The IP Court in some cases will issue interim decisions on specific issues, such as invalidity or infringement. Those interim decisions cannot be appealed until the IP Court issues its final decision in a patent litigation.
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Which acts constitute direct patent infringement?
Taiwan’s Patent Act stipulates that anyone who manufactures, offers to sell, sells, uses, or imports patented goods will be liable for infringement. The provision regulates acts of direct infringement, such that manufacturing, offering to sell, selling, using, and or importing patented goods will be deemed direct patent infringement.
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Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?
Taiwan’s Patent Act does not contain explicit provisions over indirect/contributory infringement. Theories of indirect/contributory infringement can be found, however, in Taiwan’s Civil Code.
In practice, patent owners take action against indirect infringers by resorting to the joint tort theory of the Civil Code, and allege that the indirect infringers are joint tortfeasors along with the direct infringers, per the Civil Code. The elements of indirect infringement under the Civil Code include: (a) the accused person has induced others to commit direct infringement or facilitated or provided assistance to those who conduct direct infringement, (b) the accused person has a subjective intention to conduct the abovementioned acts, and (c) the direct infringer is found to be liable for patent infringement.
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How is the scope of protection of patent claims construed?
The scope of protection of patent claims includes the literal scope and the scope expanded under the doctrine of equivalents. The literal scope of a patent is determined based on the claims set forth in the specification. When interpreting the scope of the claims, the description and drawings of the patent may be used as references. Evidence used to interpret the scope of the claims includes both intrinsic and extrinsic evidence. Intrinsic evidence includes the claims, the description of the invention, the drawings, and the prosecution history file. Extrinsic evidence refers to the technique information previously disclosed, such as patents, books, magazines, reports, or products.
The scope expanded under the doctrine of equivalents is provided to protect the interests of patentees. The scope will be expanded to cover substantially the same functions, means, and results. This expansion can prevent others from derogating a patent without changing or replacing substantial technical features set forth in the specifications. Prosecution history estoppel will also be considered when construing the scope of patent claims.
When the supplement, amendment, correction, response, and or reply related to patentability narrow the scope of the claims during the process of examination of a patent application and / or maintenance, the patent owner is no longer allowed to claim the limited or excluded parts in subsequent patent infringement litigation.
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What are the key defences to patent infringement?
The key defences to the claim of patent infringement typically include “invalidity”, “non-infringement”, and “statute of limitations”. With the defence of “invalidity”, the defendant may argue the lack of the required “utility”, “novelty”, and or “non-obviousness”. With the defence of “non-infringement”, the defendant will argue that the disputed product does not read on the patent claims and is not applicable to the doctrine of equivalents. Finally, a patentee must bring a claim for damages within two (2) years after he or she has become aware of the damages and of the person(s) liable for said damages; and one’s claim for damages will become extinguished if it is not exercised within ten (10) years after the time of the alleged infringement, whether or not this person has become aware of the damages.
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What are the key grounds of patent invalidity?
To be eligible for patent protection under Taiwan’s Patent Act, an invention must meet each of the requirements of “utility”, “novelty”, and “non-Obviousness”. Patent protection will be rejected for an invention if it is not industrially applicable, or if the invention was disclosed in a printed publication or was publicly exploited or known prior to the filing of the patent application, or if the invention can be easily made by a person ordinarily skilled in the art based on prior art, the invention will not be awarded a patent. Even if the invention is patented, the granted patent right can be revoked by the patent office through an invalidation proceeding initiated by any person who challenges the validity of the patent.
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How is prior art considered in the context of an invalidity action?
An invention will be considered to lack the required novelty or non-obviousness if it constitutes part of a prior art or if someone of ordinary skill in the relevant field could easily make the invention based on prior art. When considering the novelty requirement, prior art that was disclosed in a domestic or foreign patent specification or drawings that are not part of the invention for which the application was filed, but which has become publicly known or used technology, will be cited by the examiners as grounds to reject the application. Also, if an invention claimed in a patent application is identical to an invention disclosed in the description, claims, or drawings of an earlier-filed patent application for an invention, which is laid open or published after the filing of the later-filed patent application, the invention will also be considered to lack novelty in order to comply with the first-to-file principle.
Except for the first invention of the pioneer in a particular field, most patents are inventions that are cumulative of prior art. As such, the patent office/court must avoid hindsight doubts as to when an invention is or is not obvious in light of prior art evidence. Usually, several factors will be taken into account, such as “unexpected technical effect”, “solving long-standing problems”, “overcoming technical prejudice” and “obtaining commercial success” when determining whether an invention is non-obvious. There are also some secondary considerations under the patent office’s “Examination Guidelines” as well as scholarly opinions, such as, for instance, if an invention leads to the patentee’s commercial success.
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Can a patentee seek to amend a patent that is in the midst of patent litigation?
Under Taiwan’s patent practice, a patentee is allowed to amend a patent that is in the midst of patent litigation. In practice, a patentee can seek to amend a patent whenever necessary without the limitation of time, as long as the patent is valid and has not yet been conclusively revoked. However, a patentee who would like to amend a granted patent can only delete claims, narrow the scope of claims, correct errors or translation errors, or clarify ambiguous statements. Except for the correction of translation errors, an amendment cannot go beyond the scope of content disclosed in the description, claims, or drawings as filed, or substantially enlarge or alter the scope of the claims as published.
The patent office’s examiners will review the application for amendment and determine whether the same is allowable. At the same time, in a patent infringement litigation, if a patentee amends the patented claims that were used by the patentee to assert the infringement, the IP Court will consider whether the amendment is allowable in the event that the defendant disputes the amendment.
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Is some form of patent term extension available?
Because of the special characteristic of a pharmaceutical or agrichemical invention patent, Taiwan’s Patent Act sets forth provisions that regulates patent term extensions for these kinds of patents. The Patent Act stipulates that where regulatory approval must be obtained in accordance with other laws and regulations for the exploitation of a pharmaceutical or agrichemical invention patent or the manufacturing process thereof, if such regulatory approval is obtained after the publication of the relevant invention patent, the patentee may apply for one and only one extension for the patent term of said invention patent based on the first regulatory approval. Said regulatory approval can be used only once to seek a patent term extension.
There are also some restrictions on patent term extensions. The extension period cannot exceed the length of time during which the patent cannot be exercised due to the filing of a request for the regulatory approval with the central competent authorities in charge of the relevant industry. If the time needed to obtain said regulatory approval exceeds five (5) years, the granted patent term extension will be five (5) years. For an object that is applicable to the extension, the above-said term, “pharmaceutical”, does not include any veterinary drug.
Furthermore, when requesting a patent term extension, the request form and supporting documents must be submitted to TIPO within three (3) months after obtaining the first regulatory approval, and the request for patent term extension will not be granted if the application is not filed within six (6) months prior to the expiry of the original patent term.
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How are technical matters considered in patent litigation proceedings?
In most cases, IP Court judges will consider technical matters primarily by themselves, but, with the help of technical examination officers. IP Court judges will not refer a technical issue to an independent institute unless said technical issue is extremely complicated and requires the expertise of an independent institute. Both parties in some cases are allowed to present expert witness testimony to establish technical facts.
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Is some form of discovery/disclosure and/or court-mandated evidence seizure/protection (e.g. saisie-contrefaçon) available, either before the commencement of or during patent litigation proceedings?
Discovery does not exist in Taiwan. A patentee is permitted to obtain from the court a compulsory evidence collection order that compels the infringing party to produce materials in possession of the infringing party and which are essential to the patent litigation. The patentee may also request courts to compel a third party to produce materials if said materials are in the possession of this third party and are necessary for the patentee to establish its case. The patentee may request a compulsory evidence collection order before the commencement of and during a patent litigation proceeding.
In addition, the patentee may move for a court order that appoint an examiner who may have a certain authority to inspect documents or equipment in the possession of the defendants. The court-appointed examiner will submit to the IP Court a report that summarizes his/her observation of the examination. The examiner may also be called to testify before the IP Court about his/her observation of the examination.
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Are there procedures available which would assist a patentee to determine infringement of a process patent?
Under Taiwan’s Patent Act, the defendant’s products may be assumed to be infringing on a process patent if the holder of said process patent may establish that this infringing product manufactured in accordance with the patented process is new to the world. The defendant, at the same time, may produce evidence striking that assumption.
The IP Court will not order the defendant to provide a process description unless in some exceptional situations where the plaintiff establishes that it is compellingly necessary for the IP Court to render said order.
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Are there established mechanisms to protect confidential information required to be disclosed/exchanged in the course of patent litigation (e.g. confidentiality clubs)?
Under Taiwan IP law practice, a protective order is available for those materials that contain trade secrets of a party to the patent litigation or of a third party. The IP Court will issue a protective order only if the moving party has established the necessity that certain materials be disclosed in the patent infringement proceeding, but said materials contain trade secrets of the moving party or of a third party. The IP Court will usually grant a protective order upon a request of the attorneys for the party who will have access to those confidential materials. Upon being subject to a protective order, one is prohibited from disclosing the protected materials to anyone who is not subject to the same order. Violations will result in criminal liabilities.
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Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?
Anyone who challenges the validity of a granted patent can initiate at the patent office an invalidation action against said patent. The patent office’s examiners will consider arguments by the party bringing this invalidation action and also arguments made by the patentee in response to the invalidation action. The examiner will issue a ruling on the invalidation action. Any party who disagrees with said ruling can file an appeal to the appeal review board of the patent office’s supervising agency. Any party who disagrees with the ruling made by the appeal review board can bring an administrative lawsuit at the IP Court to seek proper remedies.
Warning! A breaking thorough reform to patent invalidation proceedings is on its way. A proposal of a set of amendments to Taiwan’s Patent Act and to other relevant statutes. Once passed by the legislature, the patent invalidation action will be heard by a special review board consisting of three patent office examiners. The invalidation actions will proceed in a manner similar to litigation; oral argument hearings will be conducted before the review board renders its ruling upon the invalidation actions. Any party who disagrees with the ruling may directly bring this matter before the IP Court.
Meanwhile, defendants in patent infringement litigation usually raise an invalidity defense. Under Taiwan IP practice, the IP Court in a patent infringement proceeding will determine the validity issue on its own and will not stay the proceeding and or wait for TIPO’s ruling on the invalidation action. The IP Court’s decision on the validity issue merely binds the parties of the patent infringement litigation, and has no effect on anyone other than the parties to the patent infringement litigation. In a situation where the IP Court holds that a patent is invalid, the IP Court will dismiss the patentee’s infringement litigation on the grounds that the patentee is not able to enforce said patent. In this situation, as long as the patent office is not a party to the proceeding, the patent office will have to rule on the invalidation action independently; in other words, the IP Court’s invalidity decision in a patent infringement proceeding does not bind the patent office. In practice, however, the patent will issue its ruling on an invalidation proceeding after the IP Court issues its decision in a patent infringement proceeding, and the patent office will follow the IP Court’s opinion in respect of the validity issue. As such, the IP Court’s decision on the validity issue has a de facto binding effect upon the patent office.
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To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?
While the IP Court is open-minded to the most recent IP law developments in foreign jurisdictions, the foreign court’s rulings on any issues relevant to a case heard by the IP Court will not have any controlling effect. The IP Court may, at its discretion, take reference to a foreign court’s ruling to support its reasonings but the IP Court is still obligated to apply the laws and regulations of Taiwan. The IP Court will cite a foreign court’s ruling only if, in the IP Court’s view, said ruling is not inconsistent with Taiwan law.
Foreign courts’ rulings on issues in relation to foreign equivalents of a patent in suit will not have binding effects on the IP Court. While the parties often submit a foreign court or institute’s ruling to the IP Court and argue that the IP Court should take into consideration of said ruling, the IP Court will need to determine the issues on its own and may take reference to the cited foreign court ruling only in extreme exceptional situations.
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How does a court determine whether it has jurisdiction to hear a patent action?
As long as the subject matter of a proceeding involves a Taiwanese patent or other intellectual property right, the IP Court will have jurisdiction over this proceeding, unless some extreme exception is present. Under current law, only the IP Court has jurisdiction over patent litigation, except for those situations where the parties have agreed on a particular district court to be the first-instance court over the disputes between the parties.
In a matter involving foreign patents, the IP Court may not have proper jurisdiction unless any of the statutory requirements presents and enables the IP Court to obtain proper jurisdiction over the matter. Taiwanese courts, including the IP Court and other courts on the ordinary court system, will not have jurisdiction when the plaintiffs would like to enforce their foreign patents and seek remedies from Taiwanese courts. The only exception is that a patentee has obtained a final and non-appealable judgement from a foreign court and seek Taiwanese courts’ recognition that enable the patentee to enforce that foreign court ruling in Taiwan.
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What are the options for alternative dispute resolution (ADR) in patent cases? Are they commonly used? Are there any mandatory ADR provisions in patent cases?
After a patentee files an infringement claim with the IP Court, the IP Court will hold a non-mandatory mediation hearing, inviting both parties to explore the possibility of settling the matter outside of the court. Nonetheless, most cases are not settled at this stage, and instead go further to the next stage.
Taiwan’s arbitration law does not preclude patent disputes from being resolved by arbitration. In practice, however, arbitration is rarely used to resolve patent disputes.
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What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?
A patentee must in the complaint state precisely which products being sold/manufactured by the defendant(s) infringe the patentee’s patent, together with a claim chart, illustrating how the products read on the specific claims that the patentee will assert in the proceeding. For the infringing products, the patentee must specifically indicate in the complaint the product numbers or other information that is able to identify the products. A rough description of the infringing products will not be accepted.
Taiwan’s patent law does not set forth any stipulations specifically imposing upon patentees any limitation periods for commencing a patent infringement proceeding. For those patentees who seek damages remedies, the statute of limitations requires them to initiate litigation within two years after they become aware of the infringing activities.
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Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?
A patentee and an exclusive licensee will have standing to bring a patent infringement action. A non-exclusive licensee will also have standing to bring a patent infringement action, provided that the non-exclusive licensee files the patent infringement action jointly with the patentee.
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Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?
For an invalidation action brought on the grounds that a patent does not satisfy the requirements (utility, novelty, and non-obvious), or that an amendment to a patent is not allowable, anyone is allowed to bring such an invalidation action and such plaintiff is not required to establish any connection with the patentee or the patent.
On the other hand, for an invalidation action based on the grounds that the holder of a patent is not a legitimate applicant (for instance, the patentee is not an inventor or the employer of the inventor/s), only a person or an entity having a legitimate interest in the patent has standing to file such an invalidation action against said patent.
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Are interim injunctions available in patent litigation proceedings?
Interim injunctions, known as “preliminary injunctions” in Taiwan, are available in patent litigation proceedings. Courts will grant a preliminary injunction only in an extremely exceptional situation where the party moving for the preliminary injunction has established that the party will suffer irreparable harm due to the injuring acts and that a preliminary injunction is thus indeed necessary for the purpose of preventing material harm or imminent danger or other similar circumstances.
The court will consider four elements when determining whether to issue a preliminary injunction: (a) the possibility that applicant might succeed in its underlying claim; (b) whether the court’s preliminary injunction might cause irreparable damage to either party; (c) the degree of potential damage to both parties; and (d) the impact that the preliminary injunction might have on the public interests. For example, the impact on the public interests will be key to the court’s consideration when determining whether to issue a preliminary injunction against pharmaceutical products because said injunction might have a significant impact on human health or on the treatment of diseases.
According to the IP Court’s records, the rate at which preliminary injunctions are granted in cases in relation to patents and other intellectual property rights is approximately 39.17% (from 2008 to June 2019), and of the 120 applications, 47 were approved.
Under Taiwan’s IP practice, before the IP Court issues a preliminary injunction, the IP Court will require the infringing party to file a brief response to arguments made by the moving party. Hearings may be held by the IP Court if necessary. A preliminary injunction could be enforced directly by the moving party after the court issues the same, whether or not the infringing party appeals said preliminary injunction order. In other words, the moving parties do not need to wait for a preliminary injunction to become conclusive and finalized.
In cases where the IP Court grants preliminary injunctions, the IP Court often requests the moving party to post a bond that could be used to compensate the allegedly infringing party’s potential loss due to enforcement of the preliminary injunction in the event that the preliminary injunction is subsequently set aside by the appellate courts.
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What final remedies, both monetary and non-monetary, are available for patent infringement? Of these, which are most commonly sought and which are typically ordered?
Typically, a patentee will sue in a patent infringement proceeding for a permanent injunction that prohibits the infringing party from manufacturing/selling the infringing products, as well as for an award of damages. The IP Court will grant these two types of remedies if the patentee successfully establishes the infringement and the damages.
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On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages?
A damage award will be granted by the IP Court if the patentee has established the infringement and the damages. The amount of said damage award may be calculated in accordance with the measures as set forth by the Patent Act, including (1) actual damages and lost profits; (2) the difference in the patentee’s profits before and after the infringing activities; (3) profits gained by infringers; and (4) reasonable royalties.
An enhanced damages award is available if the infringement has been found to be committed wilfully. In such situation, the court can grant an enhanced damages award of the amount greater than the actual damages; the amount of said enhanced damages award cannot exceed three times the actual damages.
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How readily are final injunctions granted in patent litigation proceedings?
When the patentee establishes the infringement, i.e., the fact that the infringing products fall within the scope of the asserted claims, the IP Court will usually grant a permanent injunction that prohibits the defendant from continuing any infringing activities, which injunction may include an order for destruction of the infringing things or the materials or implements used in the infringing act, or an order for other necessary disposal.
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Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?
In a situation where a party denies the patent infringement allegation made by a patentee, said party is allowed to seek declaratory relief from the IP Court, to declare that the party does not infringe the patent asserted by the patent holder. The party moving for declaratory relief must not only establish non-infringement, but must also have “immediate legal interests” in demanding such judgment. In other words, the moving party must persuade the IP Court to find a compelling interest that the moving party does need a court ruling to confirm its non-infringement.
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What are the costs typically incurred by each party to patent litigation proceedings at first instance? What are the typical costs of an appeal at each appellate level?
N/A
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Can the successful party to a patent litigation action recover its costs?
For the plaintiff, the costs incurred at the first instance include court fees, attorney fees, and any expenses necessary to establish the plaintiff’s case, such as the costs for testing the materials by an independent institute.
If the plaintiff is a foreign company without a registered presence in Taiwan, the defendant may request the court to order the plaintiff to post a bond that covers the court fees for the second and third instances.
For the defendant, the cost at the first instance is primarily the attorney fees.
At the appellate level, the party who appeals against the lower court’s ruling must cover the court fees.
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What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?
One of the largest patent litigation growth areas in Taiwan in terms of industry sector is the biotechnology industry, including the pharmaceutical industry. This reflects the policy direction that the Taiwan Government has actively promoted in recent years. As the industry continues to grow, increasingly more new drugs and new medical materials enter the markets, both local and global. Many international biotech companies have also developed patent portfolios in Taiwan. In addition, the patent linkage system in Taiwan came into effect on 20 August 2019, and protein drugs (biosimilar) are also included. The main effects include the stay of the marketing approval for 12 months and marketing exclusivity for the first generic drug applicant for 12 months. This situation has led to an expanding number of patent litigation disputes related to pharmaceuticals in Taiwan.
On the other hand, at the same time, patentees in the semiconductor industry are keen to enforce their patents in Taiwan. Many high-profile patent lawsuits have been reported.
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How has or will the Unified Patent Court impact patent litigation in your jurisdiction?
Most importantly, to have a specialized court having exclusive jurisdiction over patent litigation makes patent litigation in Taiwan more predictable and professionals in this field will be able to get ourselves ready to handle patent litigation and other IP-related proceedings. Also, a specialized court helps to concentrate Taiwan’s IP community. The IP Court has been functioning as a platform on which Taiwan’s IP attorneys present their professional knowledge and skills.
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What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?
Calculation of damage awards has always been one of the most important issues in patent litigation. The amount of damages awarded has considerable impact on patentees’ incentives to enforce their patents in the courts. In recent years, the IP Court in some high-profile cases has granted enhanced damages awards. Since 2012, in response to the patent/royalty stacking circumstances in the modern technology society, more and more patent litigation judgments have referred to the concept of patent contribution rate. The patent contribution rate is the recognition of a patent’s value in the market, and this value is possessed by the patentee. In recent judgments of the IP Court, opinions on whether and how the patent contribution rate is to be applied are not completely consistent. However, the IP Court currently tends to comprehensively consider the overall contribution of patents to the infringing products and assesses rates therefrom. Thus, it is foreseeable that the patent contribution rate in patent litigation will be a very contentious issue in Taiwan over the next twelve months.
In addition, design patent has triggered public attention because of some high-profile rulings by the IP Court against Taiwanese local manufacturers of vehicle parts. Advocacy for a statutory exemption that frees vehicle part manufactures from patent infringement liabilities has made some arguments; opponents of said exemption also made some counterarguments. Close monitor of this issue will be important for patent practitioners in Taiwan.
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Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?
From a substantive perspective, the amounts of monetary remedies granted by the IP Court are relatively low, and attorney fees and the costs incurred from collecting and investigating the infringement cannot be included in the damage compensation. This demonstrates the undervaluation of the patent. In addition, the patent invalidity ratio determined in infringement litigation is also slightly higher than that in other countries, which is a critical issue that Taiwan needs to consider.
Procedurally, there is a provision allowing plaintiffs to obtain compulsory evidence collection orders, a court order that compels defendants to produce materials that are in possession of the defendant but which are necessary for the plaintiff to establish its case. However, there are still cases in which the courts dismiss plaintiffs’ motions for said orders. Reasons given by the IP Court for its denials of said orders include the desire to avoid abuse of the proceedings, to prevent an undue impact on the stock price of the alleged infringer, and to avoid unwanted disclosure of an alleged infringer’s trade secrets. In order to determine whether these reasons are legitimate grounds upon which the IP Court can base its denials, it is necessary to carefully reconsider the evidence collection mechanism in Taiwan.
Warning! A breaking thorough reform to patent invalidation proceedings is on its way. A proposal of a set of amendments to Taiwan’s Patent Act and to other relevant statutes. Once passed by the legislature, the patent invalidation action will be heard by a special review board consisting of three patent office examiners. The invalidation actions will proceed in a manner similar to litigation; oral argument hearings will be conducted before the review board renders its ruling upon the invalidation actions. Any party who disagrees with the ruling may directly bring the matter before the IP Court.
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What are the biggest challenges and opportunities confronting the international patent system?
Taiwan’s innovations in energy, developments of industrial clusters, and Research and Design expenditures amount of the proportion of GDP are among the best in the world, and are even ranked second in patent applications. These represent Taiwan’s greatest opportunities for continued growth in the international patent system. However, Taiwan is also facing many challenges, such as international cases of theft of patent technology, trade secrets, and talent. Therefore, while actively developing a patent portfolio, it is necessary to prevent the interests of enterprises from being infringed. This may be the most difficult challenge in the international patent system for Taiwan.
Taiwan: Patent Litigation
This country-specific Q&A provides an overview of Patent Litigation laws and regulations applicable in Taiwan.
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What is the forum for the conduct of patent litigation?
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What is the typical timeline and form of first instance patent litigation proceedings?
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Can interim and final decisions in patent cases be appealed?
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Which acts constitute direct patent infringement?
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Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?
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How is the scope of protection of patent claims construed?
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What are the key defences to patent infringement?
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What are the key grounds of patent invalidity?
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How is prior art considered in the context of an invalidity action?
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Can a patentee seek to amend a patent that is in the midst of patent litigation?
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Is some form of patent term extension available?
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How are technical matters considered in patent litigation proceedings?
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Is some form of discovery/disclosure and/or court-mandated evidence seizure/protection (e.g. saisie-contrefaçon) available, either before the commencement of or during patent litigation proceedings?
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Are there procedures available which would assist a patentee to determine infringement of a process patent?
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Are there established mechanisms to protect confidential information required to be disclosed/exchanged in the course of patent litigation (e.g. confidentiality clubs)?
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Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?
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To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?
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How does a court determine whether it has jurisdiction to hear a patent action?
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What are the options for alternative dispute resolution (ADR) in patent cases? Are they commonly used? Are there any mandatory ADR provisions in patent cases?
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What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?
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Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?
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Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?
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Are interim injunctions available in patent litigation proceedings?
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What final remedies, both monetary and non-monetary, are available for patent infringement? Of these, which are most commonly sought and which are typically ordered?
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On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages?
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How readily are final injunctions granted in patent litigation proceedings?
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Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?
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What are the costs typically incurred by each party to patent litigation proceedings at first instance? What are the typical costs of an appeal at each appellate level?
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Can the successful party to a patent litigation action recover its costs?
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What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?
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How has or will the Unified Patent Court impact patent litigation in your jurisdiction?
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What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?
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Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?
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What are the biggest challenges and opportunities confronting the international patent system?