Notes for Initiating a Patent Lawsuit in Taiwan

Yu-Li Tsai, Patent Attorney

ˇ˝ Bachelor of EE from National Taiwan University

ˇ˝ Master from Telecommunications from National Taiwan University

ˇ˝ IP Master from New Hampshire Law School (Franklin Pierce)

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 1.     What different actions are available to the owner of a technical intellectual property right against infringement of that right.

Sending a warning or cease-and-desist letter developing a licensing relation, seeking a settlement/mediation or initiating a lawsuit before the district or IP Court are all available to the owner of a technical intellectual property right against infringement.  Further, injunctions or cross-border measures are available too.  For trademark and copyright infringements, criminal offenses can be claimed.

 2.     What remedies are available to third parties who wish to remove the effects of the technical intellectual property right (e.g. revocation action, action for a compulsory license, post-grant review, etc.)? Are there any particular admissibility/standing requirements (e.g. legal or commercial interest)? If so, how are they satisfied?

Under Taiwanˇ¦s patent practices, any third party can challenge or petition a post-geant review on the validity of a patent before the IPO and the losing party can subsequently appeal before the PAC, IP Court and SAC.  There is no particular admissibility/standing requirement.

In response to a national emergency or other circumstances of extreme urgency, the TIPO will, in accordance with an emergency order or after notice from the central government authorities in charge of the business, grant compulsory licensing of a patent needed, and notify the patentee as soon as reasonably practicable.

The TIPO may, upon request, grant compulsory licensing of a patent under any of the following circumstances for which it is deemed necessary: (1) where a patented invention is to be exploited non-commercially for the enhancement of public interest; (2) where a later invention or utility model patent cannot be exploited without infringing upon a prior invention or utility model patent, and where the later invention or utility model patent involves an important technical advancement of considerable economic significance in relation to the prior invention or utility model patent; or (3) where a patentee has committed acts restricting competition or has committed unfair competitive acts, for which a judgment has been made by a court of law or a decision has been rendered by the Fair Trade Commission of the Executive Yuan.

 3.     Which courts have jurisdiction in intellectual property matters in first, second, and, if applicable, third instance?

The district or the IP Court has jurisdiction instance in the first instance and the high or IP Court has jurisdiction in the in the second instance while the Supreme Court (SC) has jurisdiction in the third instance for the civil or criminal infringement.  For the prosecution or administrative matters, the IP Court has jurisdiction for the first instance while the SA Court has jurisdiction over the second or final instance.

 4.     Are there any prerequisites to filing a lawsuit (e.g. issuing a formal demand letter, warning letters, engaging in mediation, etc.)?

There is no prerequisite to filing a lawsuit, but generally the plaintiff will issue warning letters before filing the lawsuit.

 5.     Do the parties in intellectual property matters need to be represented by a lawyer?

No, it is unnecessary for the parties in intellectual property matters to be represented by a lawyer, but hiring a lawyer is always recommended.  Further, a civil court action before SC needs a lawyer representation, so does a private prosecutor before a criminal court or an agent for oral debate before an SC criminal panel.

 6.    Are interim injunctions available? If yes, what are the circumstances under which an interim injunction is granted?

A creditor or claimant may apply for a provisional injunction or measure with regard to monetary or non-monetary claims for purposes of securing the satisfaction specific performance or of compulsory execution.  A provisional injunction or measure shall not be granted unless there is shown an impossibility or extreme difficulty to satisfy the claim by specific performance compulsory execution in the future should there arise a change in the status quo of the matter.

 7.    What can a potential opponent do to protect itself (e.g. protective briefs, require a bond to be posted by the owner)?

The potential opponent can do the following to protect itself: (1) try to submit a protective brief though it is not statutory and we have not heard any precedent; (2) investigate whether the patent rights term has expired; (3) investigate whether the annuity was duly paid; (4) investigate whether the patent rights are invalid or whether the patent rights are subject to unfavourable invalidation decision or vulnerable to an invalidation; (5) investigate whether the patent rights have been limited by law, e.g. (a) whether the suspected products are subject to a non-infringement statutory exemption, (b) whether the suspected products are subject to compulsory licensing, (c) whether the scope of the claims of the invention or utility model patent are limited by prosecution history estoppels, or (d) whether the suspected products are merely implementation of the prior art and a prior art defense is available; and (5) investigate whether the time limit for actions has expired.

 8.    Do special limitation provisions apply in intellectual property matters? If yes, please describe them.

An infringement action is actionable within two years from the date on which the owner gets know to, and within 10 years from the date on which the action is made.  Further, the patent rights shall not extend to the acts of (1) private and non-commercial purposes; (2) research or experimental purposes; (3) prior use before the patent filing date; (4) seizing vehicles merely passing through the territory of this country; (5) a false patent applicantˇ¦s prior use before invalidation by the actual patentee; (6) use under international exhaustion doctrine, etc.

 9.    Does your legal system have mechanisms by which a party to an intellectual property matter can obtain relevant information and evidence from the other party or a third party? If yes, please describe such mechanisms.

When a document or object (hereinafter document) for is in the opposing partyˇ¦s or third partyˇ¦s possession, a party shall move the court to order the opposing party or the third party to produce such document.  When the court considers that the disputed fact is material and that the motion is justified, it can order the opposing party or third party to produce the document through a ruling.

In addition, a party has the duty to produce the following documents: (1) documents to which such party has made reference in the course of the litigation proceeding; (2) documents which the opposing party may require the delivery, production or an inspection thereof pursuant to the applicable laws; (3) documents which are created in the interests of the opposing party; (4) commercial account books; and (5) documents which are created regarding matters relating to the action.

 10.    Describe the initial pleading standards (level of detail/plausibility/specificity) for a complaint or other document that is filed to initiate a lawsuit. Are there any special provisions for lawsuits in intellectual property proceedings that differ from non-intellectual property proceedings? Is it possible to supplement pleadings with additional arguments? If so, in what circumstances?

There is generally no special provision for lawsuits in intellectual property proceedings that differ from non-intellectual property proceedings.  However, for a patent infringement lawsuit, the plaintiff is required to demonstrate why there is a patent infringement or submit a patent infringement evaluation report.  The initial pleading standards for a complaint are preponderance of evidence.

After the service of the complaint, the plaintiff may not amend its claim or raise additional claims, except in case of any of the following circumstances: (1) where the defendant agrees; (2) where the amendment or addition of the claim is based on the same transaction or occurrence; (3) where only the demand for judgment for the relief sought is expanded or reduced; (4) where the change of circumstances makes it necessary to replace the original claim with another claim; (5) where the claim shall be adjudicated jointly with regard to several persons and one or several such persons who are not parties are joined as parties; (6) where the existence or nonexistence of a certain legal relation, based upon which relation the case shall be decided, becomes disputed in the course of the proceeding and an additional claim for a declaratory judgment confirming such legal relation against the defendant is raised; (7) where it would neither severely obstruct the defendant's defense nor delay litigation.

In addition, supplementing or rectifying factual or legal statements supporting rather than changing the claim may always be submitted by the closure of oral debate.

 11.    Does your legal system permit representative or collective actions (such as class actions) for intellectual property rights proceedings? If so, please describe under what circumstances such actions are permitted.

Multiple parties, who have common interests, may appoint one or more persons from among themselves to sue or to be sued on behalf of the appointing parties and the appointed parties.  In addition, multiple parties with common interests who are members of the same incorporated charitable association may, to the extent permitted by said association's purpose as prescribed in its bylaws, appoint such association as an appointed party to be sued on behalf of them.

 12.    What restrictions are there on the owner of an intellectual property right asserting its right against others (e.g. patent misuse/abuse, anti-competition, etc.)?

A patentee cannot commit acts of restricting competition or unfair competition.  Further, the TIPO may, upon request, grant compulsory license of a patent when a patentee has committed acts restricting competition or has committed unfair competition acts, for which a judgment has been made by a court of law or a decision has been rendered by the Fair Trade Commission of the Executive Yuan.  A compulsory license will also be granted when there is a non-profit use in national emergency or public interest improvement.  A compulsory license is also possible when a re-invention represents an economic significance.

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