18 December 2015Jurisdiction reportsCrystal Chen and Jesse Peng

Taiwan: Obstacles to patent invalidity decisions

The patent at issue is still valid unless it is invalidated in a separate action by the Taiwan Intellectual Property Office (TIPO) or, in an appeal, by the administrative court. A patent invalidated by the administrative court will be cancelled and be deemed as ‘non-existent from the beginning’. This is the so-called ‘bifurcated system’ of patent invalidation.

Such a system creates a potential conflict between civil and administrative judgments, especially when the administrative court invalidates a patent after a final civil judgment has rendered that the patent has been infringed. If the civil court has already rendered its final judgment on infringement and awarded damages, it must be determined whether the defendant can request for a retrial based on the administrative court’s final and binding judgment of patent invalidity.

IP Court’s opinion

In a recent retrial judgment, the Taiwan IP Court rejected a petition for retrial after administrative invalidation of patent. The court has reasoned that: “The civil final judgment is rendered based on the supporting evidence available in the first instance at the discretion of the civil court empowered by the Intellectual Property Case Adjudication Act (CIPAA).

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