Newsletter
STAY OF PATENT INFRINGE-MENT SUIT CAN BE GRANTED ONLY IN EXCEPTIONAL CASES
Article 90, Paragraph 1 of the Patent Act pro-vides that proceedings in civil litigation over invention patent rights may be suspended pend-ing the irrevocable outcome of a patent applica-tion, invalidation action, or revocation action. However, Paragraph 2 of the same article pro-vides that in the case of an invalidation action, when a court considers whether to suspend pro-ceedings under the above provision, it must examine the legitimacy of the invalidation action. Article 108 and Article 129 Paragraph 1 of the Act apply the above provisions mutatis mutandis to utility model and design patents.
The Supreme Court elucidated the above provi-sions in a 2006 ruling on a motion to set aside a ruling of the Taiwan High Court. In its ruling, the Supreme Court stated that a court may only suspend proceedings in such a case if it is con-vinced that it is appropriate to suspend proceed-ings until the outcome of the patent application, opposition action, invalidation action, or revo-cation action becomes irrevocable. It is not obliged to suspend litigation merely because an invalidation action is pending.
As for what constitutes a justified reason, the Supreme Court stated that in the case at issue, during more than three years of litigation over a damages claim for infringement of a utility model patent, the infringer had not filed an in-validation action against the patent in question as a basis for asserting that the patent should be revoked; it was not until a judgment against the infringer in the damages suit had become ir-revocable that the infringer had filed an invali-dation action with the Intellectual Property Of-fice, and had petitioned the trial court for a retrial. Under these circumstances, the infringer's filing of an invalidation action could not be considered legitimate, and therefore it was not necessary to suspend proceedings on the issue of a retrial in the damages suit.