HEARING PROGRAM FOR PATENT INVALIDATION CASE

Wei-Ting Chou, Patent Director, Patent Group I

¡½ Master of Agricultural Engineering, National Taiwan University

¡½ Bachelor of Medical Engineering, National Cheng Kung University

1. Basis and purpose:

1.1 Based on the stipulations of Paragraph 2 of Article 107 and Articles 54-56 of the Administrative Procedure Act regarding the hearing proceedings, the Intellectual Property Office (hereinafter referred to as the Office) of the Ministry of Economic Affairs drew up the hearing program for the patent invalidation case (hereinafter referred to as the program) for hearing the case.

1.2 The purpose of the hearing is to provide the opportunity where the parties of the invalidation case at issue may personally state their opinions and interrogate each other with respect to the issues, evidences and legal interpretations, and help the Examiner in charge examine all facts and evidences to be investigated through the cross-examination, so as to find out the truth based on the logic and empirical law to form a free evaluation and to make a decision accordingly.

2. Definitions of the terms:

2.1 The proper parties: the invalidator and the patentee.

2.2 The interested parties: the following parties other than the proper parties:

(1) The party involved in due to the patent at issue;

(2) The licensee and pledgee of the patent at issue; and

(3) The party whose rights or interests are affected due to the existence or nonexistence of the patents rights.

2.3 The agent: the patent attorney, patent agent or lawyer appointed by the mentioned parties above.

2.4 The chairman: elected from one of the Examiners in charge of the invalidation case.

3. To hold the hearing:

3.1 If one of the proper parties considers that it is necessary to make an interrogation therefor or to query the witness or the appraiser, the one should submit a petition with specific reasons for the hearing.  The Office will hold the hearing if considered necessary.

3.2 The Office will hold the hearing ex officio if considered necessary.

4. To forward the relevant documents or evidence:

Before announcing the details of the hearing, the Office should forward the relevant documents or evidence submitted by one of the proper parties to the other; after announcing the details of the hearing, one of the proper parties should voluntarily submit the subsequent relevant documents, if any, to the other and the Office.

5. Preparatory proceedings:

5.1 To smooth the hearing, the Office may, depending on the complexity of the individual case, notify the proper parties to attend the preparatory proceeding to:

(1) negotiate the proceedings for the hearing;

(2) clarify the eligibility of the documents and evidence;

(3) clarify the issues; and

(4) deal with other matters related to the hearing.

5.2 The preparatory proceedings should be recorded.

6. Notification and Announcement of holding the hearing:

6.1 The following details should be sent in a written notification to the proper parties, and announced at the Office or on its official website 30 days before the hearing date:

(1) The reasons and basis of the hearing;

(2) The names of the proper parties;

(3) The date and place to hold the hearing;

(4) The main proceedings of the hearing;

(5) The proper parties may appoint their agents;

(6) During the hearing, either one of the proper parties may only state his opinions and may not submit new challenging or defending evidence, and, after a permission from the chairman, may query the witness, the appraiser, the other proper party, or the agent thereof;

(7) If one of the proper parties does not attend the hearing after being legally notified, the hearing may be held with only the other one; and

(8) The reasons to or not to make the hearing public.

6.2 If a proper party petitions for querying the witness or the appraiser, the Office, if considering it necessary, may notify the witness or the appraiser of this before holding the hearing.

6.3 A proper party, if intending to change the officially specified hearing date, should submit a petition therefor with specific reasons 10 days before the date.  If there are justified reasons, the Office may agree therewith and notify a changed date to hold the hearing.  If there are no justified reasons, the Office will notify that the hearing will be still held on the scheduled hearing date.

6.4 A proper party, when considering that it obviously violates the public interests or will cause material harm to the interests of the proper party by making the hearing proceedings public, may submit a petition with specific reasons for not making the hearing proceedings public.  If there are justified reasons, the Office may agree therewith and notify that the hearing proceedings will not be made public.  If there are no justified reasons, the Office will notify that the hearing proceedings will still be made public.

6.5 The interested parties, if intending to attend the hearing, should submit relevant proof documents therefor within 20 days following the announcement of the hearing.

6.6 The Office may change the hearing date or cancel the hearing ex officio, and notify and announce the changed hearing date.

6.7 A proper party, if considering that there are statutory reasons to recuse an Examiner, should submit a petition with specific reasons therefor within 10 days following the receipt of the notification of the hearing.

7. A reply regarding not to hold the hearing:

The Office, if considering that the reasons to petition for the hearing are obviously not related to the invalidation case or the case is clear so that the hearing is not necessary, should notify the petitioner of the reasons why the hearing is not to be held or state these reasons in the Decision of the invalidation case.

8. The authority of the chairman of the hearing:

The chairman of the hearing shall maintain an unbiased and fair position to conduct the hearing.

The hearing chairman may exercise the following authorities during the hearing:

(1) To query the proper parties and other persons present at the hearing with respect to questions of fact or law;

(2) To delegate ex officio or upon petition from a proper party any other related agency to conduct a necessary investigation;

(3) To notify the witness or the appraiser to attend the hearing;

(4) To notify or allow ex officio or upon petition the interested parties to attend the hearing;

(5) To permit the proper parties or any other person present at the hearing to raise questions or to make statements;

(6) To prevent either proper party or any other person present at the hearing from making statements in order to avoid a delay of the hearing proceedings, and to instruct the person who seriously obstructs the hearing proceedings to quit from the hearing;

(7) A proper party who is late for the hearing should not be allowed to attend the hearing, unless the chairman considers that the attendance thereof is necessary for clarifying the case;

(8) To start, postpone or conclude the hearing proceeding if one or both of the proper parties are absent therefrom without reasons therefor;

(9) To adopt the statements contained in the relevant documents presented by a proper party at the preparatory proceedings as his statements made at the hearing;

(10) To determine, before the end of the hearing, a date and place to hold a further hearing if considered necessary;

(11) To suspend the hearing or change the date thereof ex officio or upon petition from a proper party if there is a force majeure or other incident so that the hearing cannot be held; and

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