Three-and-a-half year Anniversary check-up of the IP Court patent litigation in Taiwan 

Yulan Kuo, Yu-Jia Yen

Since the creation of the new IP Court in July 2008, there have been some interesting developments in patent litigation.  We would like to take this chance to exam whether the new IP Court has solved all the problems existed in the old system.  Before the reform, the patent litigations in Taiwan were heavily criticized for its long proceedings, lack of ability to deal with technical issues, difficult to collect evidence and misuse of preliminary injunction.  Our examination shows that the IP Court has been able to address some issues and as to other problems, however, there is still room for improvement.

Before the IP Court was born, a plaintiff who brought a claim for patent infringement in civil courts would normally have to wait for 3 to 5 years before the court can start to review its case.  This is because under the old system, the civil courts did not have jurisdiction over the validity of a patent and therefore, they had to stay the infringement case pending the final decision on the validity of the patent by the administrative courts.  After the reform, the IP Court, in the other hand, has the jurisdiction to decide the validity of the patent in a particular case and makes its own judgment whenever the defendant raises the invalidity defense.  This results in the more speedy patent infringement litigation.  According to the statistics provided by Taiwan International Patent and Law Office, the average days it takes for the IP Court to render its judgment in the first instance are 155.38 days. 

The second interesting feature to note is that the inclusion of Technical Examination Officer to assist the judge has greatly improved the ability of the court to deal with various technical issues in patent litigation.  In an oral presentation conducted by the former head of technical examination officer, he found that the judges are greatly improved in their technical knowledge through their interaction with technical examination officers.  This also decreases the need for the parties to bring multiple verification reports in a single patent litigation.

The reform also contains rules that allow the IP Court judges to issue an Evidence Preservation Order to exam or preserve the evidence before plaintiff files the compliant.  This is a great weapon given to the court since we do not have an US-like discovery procedure.  Nevertheless, in practice only 8% of application was granted since July 2008, which seems to indicate the somehow conservative attitude of IP Court to grant such orders.

One last but not least interesting feature of the IP Court is that the new laws clearly list the factors to be considered in granting a preliminary injunction.  In the past, the preliminary injunction is issued much more easily if the applicant is willing to post a bond.  Now before a preliminary injunction is issued, the court now will ask the applicant to show that (1) he will likely succeed on the merits, (2) irreparable harm would result if the injunction is not granted, (3) there is a sufficiently serious question that goes directly to the merits of the litigation which will tip the balance of hardships in the applicant’s favor, (4) the injunction will not have an adverse impact on public interest.  From July 2008, only 16% of applications for the preliminary injunction were granted. 

The IP Court has dramatically changed the climate of patent litigation in Taiwan.  Our analysis shows that some of the shortcomings have been cured by the new system and some still need to be improved in the future.  This will need to be done by both the IP Court and legal practitioners.