08.30.2019
Hearings Program for Patent Invalidation Cases1 (Part 1)
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BY MENG-HSUEH KU
1. Basis and Purpose
1.1 The Intellectual Property Office of the Ministry of Economic Affairs (referred to as “this Office” hereinafter) establish a Hearings Program for Patent Invalidation Cases (referred to as “this Program” hereinafter) in accordance with Article 107, Paragraph 2, of the Administrative Procedure Act, Articles 54 to 66 of the Hearing Procedure and other relevant regulations, in order to hold patent invalidation cases.
1.2 The purpose of the hearing is to provide the concerned party of the disputed invalidation case with an opportunity to make statements and mutual inquiries about the disputed case, the evidences, legal insights and so on, and to facilitate the trial examiner to consider all of the facts and evidences investigated and the results of the mutual inquiries during the hearing, to determine the truth of the facts based on the logical rule and the rule of thumb, thereby forming an evaluation of evidence through inner conviction and reaching a decision accordingly.
2. Term Definition
2.1 Concerned party: refers to a petitioner and a patentee of the disputed invalidation case.
2.2 Interested party: refers to the following persons other than the concerned party of the disputed invalidation case:
(1) A litigant involved in the disputed patent.
(2) Licensee and pledgee of the disputed patent.
(3) Others whose rights or interests are affected because of the existence or non-existance of the disputed patent rights.
2.3 Agent: refers to the patent attorney, patent agent or lawyer appointed by the aforementioned concerned party or interested party.
2.4 Hearing Officer: one person is appointed from the trial examiners of the disputed invalidation case.
3. Holding of Hearing
3.1 When a concerned party of the disputed invalidation case considers that making a mutual inquiry with the opposite party or questioning witness or expert witness is necessary, an application with specific reasons shall be submitted to apply for a hearing. Whether a hearing is held is decided at the discretion of this Office.
3.2 The hearing may be held ex officio when this Office considers it necessary.
4. Forwarding of Relevant Documents or Evidence
Before the announcement of the hearing, this Office shall forward the relevant documents or evidences submitted by a concerned party to the opposite party. After the announcement of the hearing, the relevant documents submitted by the concerned party shall be sent by himself/herself to the opposite party and this Office.
5. Preliminary Hearing
5.1 To facilitate the unobstructed progression of the hearing, this Office, depending on the complexity of the individual case, may notify the concerned party of holding a preliminary hearing for the following purposes:
(1) Discussing on the procedure of which the hearing proceeds.
(2) Clarifying eligibility of documents and evidence.
(3) Clarifying issues.
(4) Other matters related to the hearing.
5.2 The proceeding of the preliminary hearing shall be recorded.
6. Notice and Announcement of Hearing
6.1 30 days before the date of holding a hearing, a written notice stating the following matters shall be served to the concerned party, and be announced in the office or on the website of this Office.
(1) Cause and basis of the hearing.
(2) Name or trade name of the concerned party.
(3) Date and place of the hearing.
(4) Basic procedure of the hearing.
(5) The concerned party must be elected as an agent.
(6) During the hearing, the concerned party merely states their opinions, cannot present new offence/defense means, and with the consent of the hearing officer, questions witness, expert witness, and other concerned party or agent thereof.
(7)If a concerned party fails to attend the hearing after a legal notice, a unilateral hearing may be held.
(8) Reasons whether the hearing should be open to the public.
6.2 If the concerned party requests for questioning witnesses or expert witnesses, this Office shall inform the witnesses or the expert witnesses before the hearing if considered it necessary.
6.3 If a concerned party applies for rescheduling the hearing, an application shall be filed with an application document attached and specific reasons stated 10 days before the date of the scheduled hearing. If there is a proper cause, this Office may agree and inform the rescheduling of the hearing; if there is no proper cause, this Office will inform the concerned party that the hearing is held as scheduled.
6.4 If a concerned party considers that making the hearing procedure open to the public is obviously against public interest or causes serious damage to his/her interest, an application shall be filed with an application document attached and specific reasons stated, within 10 days after receipt of a notice of the hearing, to request a closed hearing procedure. If there is a proper cause, this Office may agree and inform the concerned party that the closed hearing procedure is going to be held; if there is no proper cause, this Office will inform that the hearing procedure shall be open to the public.
6.5 If an interested party intends to attend the hearing, an application for attending the hearing shall be filed with a supporting document attached within 20 days after the announcement of the hearing.
6.6 The Office may ex officio change the date of hearing or cancel the hearing, and the change of the date of hearing shall be informed and announced again.
6.7 If a concerned party considers that the examiner shall recuse himself as statutory, an application for a recusal of the examiner shall be filed with an application document attached and specific reasons stated within 10 days after receipt of a notice of the hearing.
7. Reply to Decision Not To Hold Hearing
With respect to an application for a hearing, if this Office considers that the reason is obviously not related to the case or the condition of the case is clear such that there is no need for the hearing, the reason for not holding the hearing shall be served to the applicant or stated in the examination decision.
8. Power of Hearing Officer
The hearing officer shall conduct the hearing in an unbiased and fair manner. The hearing officer may exercise the following powers during the hearing:
(1) Inquiring a concerned party and other attendees with respect to facts or legal issues.
(2) Entrusting relevant authorities to conduct necessary investigations ex officio or upon application of a concerned party.
(3) Notifying the attendance of the witnesses or expert witnesses.
(4) Notifying or allowing the attendance of an interested party in the hearing ex officio or upon application.
(5) Allowing a concerned party and other attendees to raise a question or make a statement.
(6) Forbidding a concerned party or other attendees to speak in order to avoid the delay of the proceeding of the procedure; and forcing them to leave if there is a serious violation to obstruct the proceeding of the hearing.
(7) A concerned party shall not attend the hearing if not attending the hearing in time, but may be allowed to attend the hearing when the hearing officer considers it is necessity to clarify the condition of the case.
(8) The hearing shall be carried out directly, postponed or canceled if a concerned party is absent without reason.
(9) If a concerned party had filed relevant documents during the preliminary hearing, the content stated therein may be regarded as his/her statement
(10) The date and place of a further hearing will be decided before the end of the date of the hearing when it is deemed necessary
(11) If natural disasters or other accidents occur to prevent the hearing, the hearing may be suspended or rescheduled ex officio or upon application of a concerned party.
(12) Taking other measures necessary for facilitating the hearing.
1 Amendments to Patent Invalidation Case Hearing Program implemented on August 5, 2019
https://www1.tipo.gov.tw/ct.asp?xItem=716312&ctNode=7860&mp=1
- To be continued -
1. Basis and Purpose
1.1 The Intellectual Property Office of the Ministry of Economic Affairs (referred to as “this Office” hereinafter) establish a Hearings Program for Patent Invalidation Cases (referred to as “this Program” hereinafter) in accordance with Article 107, Paragraph 2, of the Administrative Procedure Act, Articles 54 to 66 of the Hearing Procedure and other relevant regulations, in order to hold patent invalidation cases.
1.2 The purpose of the hearing is to provide the concerned party of the disputed invalidation case with an opportunity to make statements and mutual inquiries about the disputed case, the evidences, legal insights and so on, and to facilitate the trial examiner to consider all of the facts and evidences investigated and the results of the mutual inquiries during the hearing, to determine the truth of the facts based on the logical rule and the rule of thumb, thereby forming an evaluation of evidence through inner conviction and reaching a decision accordingly.
2. Term Definition
2.1 Concerned party: refers to a petitioner and a patentee of the disputed invalidation case.
2.2 Interested party: refers to the following persons other than the concerned party of the disputed invalidation case:
(1) A litigant involved in the disputed patent.
(2) Licensee and pledgee of the disputed patent.
(3) Others whose rights or interests are affected because of the existence or non-existance of the disputed patent rights.
2.3 Agent: refers to the patent attorney, patent agent or lawyer appointed by the aforementioned concerned party or interested party.
2.4 Hearing Officer: one person is appointed from the trial examiners of the disputed invalidation case.
3. Holding of Hearing
3.1 When a concerned party of the disputed invalidation case considers that making a mutual inquiry with the opposite party or questioning witness or expert witness is necessary, an application with specific reasons shall be submitted to apply for a hearing. Whether a hearing is held is decided at the discretion of this Office.
3.2 The hearing may be held ex officio when this Office considers it necessary.
4. Forwarding of Relevant Documents or Evidence
Before the announcement of the hearing, this Office shall forward the relevant documents or evidences submitted by a concerned party to the opposite party. After the announcement of the hearing, the relevant documents submitted by the concerned party shall be sent by himself/herself to the opposite party and this Office.
5. Preliminary Hearing
5.1 To facilitate the unobstructed progression of the hearing, this Office, depending on the complexity of the individual case, may notify the concerned party of holding a preliminary hearing for the following purposes:
(1) Discussing on the procedure of which the hearing proceeds.
(2) Clarifying eligibility of documents and evidence.
(3) Clarifying issues.
(4) Other matters related to the hearing.
5.2 The proceeding of the preliminary hearing shall be recorded.
6. Notice and Announcement of Hearing
6.1 30 days before the date of holding a hearing, a written notice stating the following matters shall be served to the concerned party, and be announced in the office or on the website of this Office.
(1) Cause and basis of the hearing.
(2) Name or trade name of the concerned party.
(3) Date and place of the hearing.
(4) Basic procedure of the hearing.
(5) The concerned party must be elected as an agent.
(6) During the hearing, the concerned party merely states their opinions, cannot present new offence/defense means, and with the consent of the hearing officer, questions witness, expert witness, and other concerned party or agent thereof.
(7)If a concerned party fails to attend the hearing after a legal notice, a unilateral hearing may be held.
(8) Reasons whether the hearing should be open to the public.
6.2 If the concerned party requests for questioning witnesses or expert witnesses, this Office shall inform the witnesses or the expert witnesses before the hearing if considered it necessary.
6.3 If a concerned party applies for rescheduling the hearing, an application shall be filed with an application document attached and specific reasons stated 10 days before the date of the scheduled hearing. If there is a proper cause, this Office may agree and inform the rescheduling of the hearing; if there is no proper cause, this Office will inform the concerned party that the hearing is held as scheduled.
6.4 If a concerned party considers that making the hearing procedure open to the public is obviously against public interest or causes serious damage to his/her interest, an application shall be filed with an application document attached and specific reasons stated, within 10 days after receipt of a notice of the hearing, to request a closed hearing procedure. If there is a proper cause, this Office may agree and inform the concerned party that the closed hearing procedure is going to be held; if there is no proper cause, this Office will inform that the hearing procedure shall be open to the public.
6.5 If an interested party intends to attend the hearing, an application for attending the hearing shall be filed with a supporting document attached within 20 days after the announcement of the hearing.
6.6 The Office may ex officio change the date of hearing or cancel the hearing, and the change of the date of hearing shall be informed and announced again.
6.7 If a concerned party considers that the examiner shall recuse himself as statutory, an application for a recusal of the examiner shall be filed with an application document attached and specific reasons stated within 10 days after receipt of a notice of the hearing.
7. Reply to Decision Not To Hold Hearing
With respect to an application for a hearing, if this Office considers that the reason is obviously not related to the case or the condition of the case is clear such that there is no need for the hearing, the reason for not holding the hearing shall be served to the applicant or stated in the examination decision.
8. Power of Hearing Officer
The hearing officer shall conduct the hearing in an unbiased and fair manner. The hearing officer may exercise the following powers during the hearing:
(1) Inquiring a concerned party and other attendees with respect to facts or legal issues.
(2) Entrusting relevant authorities to conduct necessary investigations ex officio or upon application of a concerned party.
(3) Notifying the attendance of the witnesses or expert witnesses.
(4) Notifying or allowing the attendance of an interested party in the hearing ex officio or upon application.
(5) Allowing a concerned party and other attendees to raise a question or make a statement.
(6) Forbidding a concerned party or other attendees to speak in order to avoid the delay of the proceeding of the procedure; and forcing them to leave if there is a serious violation to obstruct the proceeding of the hearing.
(7) A concerned party shall not attend the hearing if not attending the hearing in time, but may be allowed to attend the hearing when the hearing officer considers it is necessity to clarify the condition of the case.
(8) The hearing shall be carried out directly, postponed or canceled if a concerned party is absent without reason.
(9) If a concerned party had filed relevant documents during the preliminary hearing, the content stated therein may be regarded as his/her statement
(10) The date and place of a further hearing will be decided before the end of the date of the hearing when it is deemed necessary
(11) If natural disasters or other accidents occur to prevent the hearing, the hearing may be suspended or rescheduled ex officio or upon application of a concerned party.
(12) Taking other measures necessary for facilitating the hearing.
1 Amendments to Patent Invalidation Case Hearing Program implemented on August 5, 2019
https://www1.tipo.gov.tw/ct.asp?xItem=716312&ctNode=7860&mp=1
- To be continued -
