Newsletter
2024 Amendment to “Rules for Hearings on Patent Invalidation Cases”
In 2018, the Intellectual Property Office (IPO) introduced hearing procedures for patent infringement cases and released the "Rules for Hearings on Patent Invalidation Cases". The IPO has released data showing that as of May 2024, only 32 disclosure hearings have been conducted, indicating low utilization. In order to improve the quality of the hearing process, the IPO revised its hearing operation rules in 2019 and 2021. On May 10, 2024, the IPO once again announced a revised draft, renaming the previous rules as "Guidelines for Hearings on Patent Invalidation Cases" (hereinafter referred to as the "new guidelines"), with the main revisions as follows.
1. Strengthening the function of "pre-hearing preparation" (point 5 of new guidelines)
"Pre-hearing preparation" refers to preparatory procedures before the formal hearing. The current rules specify details of matters that can be handled in the pre-hearing preparation process, including procedures for conducting the hearing, clarifying admissibility of documents and evidence, and others. This amendment further adds regulations pertaining to organization and simplification of the disputed issues, clarifies the post-grant amendments of disputed patents, specifies procedures for agreement on key points of defense and offense during the hearing process, and stipulates that both parties are bound by the agreement.
2. Clearly stipulating that presiding officers may appropriately disclose opinions and judgment (point 8 of new guidelines)
The current rules stipulate that one of the examiners responsible for examining the patent invalidation case is to be designated as the presiding officer for the hearing, and confirms the authority thereof to conduct the process. The amendment further stipulates that the presiding officer may moderately disclose thoughts on factual, legal, and/or evidential disputes, to render the hearing process more transparent. This will allow the parties and participants to have a clearer understanding of the reasoning and basis for the examiner's decision, and further enhance credibility of the hearing process
3. Allow hearings to be conducted via video conferencing (point 9 of new guidelines)
According to data released by the IPO, two scheduled hearings were postponed in 2021 due to the impact of the Covid-19 pandemic. Hearings can now be conducted via video conferencing, enabling participants to join from office or home, avoiding delays from traffic, or other unforeseen circumstances. In addition, video conferencing hearings make it easier for international participants to join, potentially increasing the willingness of international companies to protect their patents in Taiwan.
4. The effects of absence from the hearing are clearly defined (points 6 and 9 of new guidelines)
The hearing procedure is held upon application by the parties involved. If one of the parties applies and the IPO deems it necessary, the procedure will be initiated. However, the current rules do not clearly specify any measures for dealing with a party's absence from the proceeding. This amendment clearly stipulates that if one party fails to attend the hearing on the designated date, the examiner can proceed with a "one-party hearing" based on the application of the other party. However, if any of the following conditions are the cause, the hearing shall be rescheduled:
(1) The absent party did not receive proper notification of the hearing within a reasonable period of time.
(2) The party was unable to attend due to natural disaster or other unavoidable conditions.
(3) The attending party cannot provide necessary evidence for matters to be investigated by the authority of this office.
(4) Matter presented by the attending party were not provided to the other party within a reasonable period of time.
5. The summary of the hearing record shall be recorded and supplemented with audio or video recordings to simplify content (point 12 of new guidelines).
The IPO will gather and consolidate feedback from different sectors before announcing a date for implementing the aforementioned amendments to the new guidelines.