As the IP court in Taiwan is slated to become fully functional on July 1 2008, the Judicial Yuan has drafted an exemplary court procedure for IP disputes, taking a patent infringement lawsuit for instance. The procedure is set out below.
Upon receipt of a complaint, the judge will, instead of setting up a time schedule for a series of oral hearings, serve a copy of the complaint along with the relevant evidence on the defendant and prescribe a time limit within which the defendant may file a counter statement.
Next, if the defendant raises any procedural issues in the counter statement filed, the judge may ask the two opposing parties to file observations on a plea-and-defence basis or directly proceed with the preparatory procedure.
If the judge decides not to dismiss the complaint after going through the preparatory procedure, or if no procedural issues are raised by the defendant, he or she will ask technical examiners to provide opinions and the opposing parties to file the a second or third round of observations along with evidence. At this juncture, either of the opposing parties may file a motion for investigating a specific piece of evidence as filed or request that the judgeto issue a confidentiality preservation order.
After the judge determines that sufficient documents have been produced, he or she will hold a first oral hearing wherein the disputes may be trimmed down as agreed upon by the opposing parties and with a plan for trial may be drawn up. In the meantime, the judge will determine the methodology and sequence of evidence investigation and the dates of the ensuing oral hearings.
In the event that the defendant disputes the validity of the patent at issue, the judge may prioritize the trial on validity issue. If the patent is, after trial, determined to be invalid, the judge will then dismiss the complaint as being without merit.
On the other hand, if the court considers the patent at issue to be valid, or the invalidity issue is not raised by the defendant, the judge shall determine whether the plaintiff's patent right is infringed by the defendant or not. If the two opposing parties are not in agreement with each other in terms of the construction of the claim's scope, the judge may order the two parties to file arguments to that effect. If it is held that the plaintiff's patent right is infringed, the judge shall proceed with the trial on damages and then render a decisive ruling.
The Judicial Yuan anticipates that, in general, the entire court procedure of an IP related lawsuit will wrap up within 18 months. It cautions, however, that the actual timeframe could vary on a case-by-case basis.
Frank F J Liu
Saint Island International Patent & Law Offices
7th Floor, No.248, Section 3
Nanking East Road
Taipei 105-45
Taiwan, R.O.C.
Tel: +886 2 2775 1823
Fax: +886 2 2731 6377
siiplo@mail.saint-island.com.tw
www.saint-island.com.tw
