Announcement on Patent Regulations - “Operation Directions on Hearings for Patent Invalidation Cases” Effective from June 11, 2024

August 12, 2024

1. In order to provide diverse, rapid, and professional channels for resolving patent disputes, ensuring the fairness, transparency, and efficiency of the hearing process, and safeguarding the legitimacy of administrative procedures, the Taiwan Intellectual Property Office of the Ministry of Economic Affairs (hereinafter referred to as “TIPO”) has revised the existing “The Program for Hearing Patent Invalidation Cases” to “Operation Directions on Hearings for Patent Invalidation Cases,” which became effective as of June 11, 2024. The main revision includes:
   1. Strengthening the function of Preliminary hearing, including organizing and simplifying the issues, ascertaining post-grant amendment issues in the patent invalidation case, negotiating key points of contention in the hearing, and stipulating that both parties should be bound by the agreement.
   2. Stipulating that the presiding official may moderately disclose conviction on factual, legal, or evidentiary issues.
   3. Allowing hearings to be conducted via remote video conferencing.
   4. Stipulating the consequences due to the absence from the hearing.
   5. Indicating that the minutes of a hearing may be documented the main points, with the assistance of audio or video recordings to simplify the content.
2. The “Operation Directions on Hearings for Patent Invalidation Cases” is summarized as below:
   1. Purpose and Scope:
      • Providing standardized guidance for hearing proceedings in patent invalidation cases
      • Affording the parties an opportunity to present opinions and conduct mutual inquiries
   2. Application for and Conduct of Hearings:
      • Parties may apply for a hearing or TIPO may hold one ex officio
      • Hearings shall be conducted by a panel of three or more reviewers
   3. Pre-hearing Preparation:
      • Preliminary hearings may be held to clarify issues and procedures
      • Announcement and notification must be made prior to the hearing date
   4. Hearing Proceeding:
      • The proceeding is generally open to the public, with exceptions for special circumstances
      • The presiding official maintains the hearing order and guides the procedure
      • Parties can make statements and conduct mutual inquiries
   5. Minutes and Results of the Hearing:
      • Detailed minutes of the hearing must be made, including statements of the parties and key points of mutual inquiries
      • Minutes of the hearing must be confirmed and signed by all participants
   6. Handling Special Situations:
      • Provisions for handling special situations such as the absence of parties and suspension of hearings
      • Allow for remote hearings using technological equipment
   7. Public Participation:
      • Interested parties and general public may attend under centain conditions
      • Ensure the transparency of the hearing proceeding
   8. Administrative Remedy:
      • Parties may bypass the administrative appeal procedure, and proceed directly to filing an administrative lawsuit if they are dissatisfied with the administrative decision rendered based upon the hearing.

For any inquiries regarding “Operation Directions on Hearings for Patent Invalidation Cases”, please feel free to contact us.