Newsletter
New Evidence in Administrative Lawsuit Concerning Intellectual Property
In a recent case, the Intellectual Property Court (the "IP Court") addressed the question whether parties of any administrative lawsuits concerning intellectual property rights can raise new evidence.
Article 33 of the Intellectual Property Case Adjudication Act (the "Act"), implemented on July 1, 2008, states that in an administrative lawsuit concerning invalidation of a registered trademark or patent, the IP Court shall take into account any new evidence submitted on the same grounds for the invalidation prior to the end of the oral debate procedure. The article also requires the competent intellectual property authority to provide written briefs in response to the new evidence, indicating whether arguments provided by the opposing party concerning such new evidence have merit. The purpose of this provision is to consolidate all disputes surrounding a particular trademark or patent in a single administrative lawsuit. For example, prior to the enactment of the Act, a party seeking to invalidate a patent could not enter new evidence once the Intellectual Property Office (IPO) has concluded the examination and delivers the decision; if, during the subsequent administrative remedy procedures (including the administrative appeal and the administrative lawsuit), the said party locates new evidence, what he could do is to bring a new invalidation action before the IPO. Challenges to registered trademarks face the same problem. The Act allows the parties to enter new evidence during the administrative lawsuit proceedings without having to start a new invalidation action.
However, the Act also raised new legal problems because there are three parties in any administrative lawsuit concerning an invalidation action. For example, in a patent invalidation action, the parties are the patentee, the party initiating the invalidation action, and the government authority. Depending on the case, the patentee and the party initiating the invalidation action would respectively be the plaintiff and the intervening party, and vice versa. And, the defendant must be the government authority, which is usually the IPO. May all three parties enter new evidence pursuant to Article 33 of the Act? The Judicial Yuan concluded in its 2009 Intellectual Property Law Forum that only the plaintiff and the intervening party may enter new evidence during the administrative lawsuit.
Another problem is how Article 33 should apply when the defendant of the administrative lawsuit is not the IPO. Under Taiwan's system of administrative lawsuit, when a party of a patent invalidation action does not agree with the decision of the IPO, he may appeal to the Ministry of Economic Affairs (the "MOEA"). If the MOEA affirms the IPO's decision, then the party may initiate an administrative lawsuit against the IPO in the IP Court. Alternatively, the party may also initiate an administrative lawsuit against the MOEA if he is only dissatisfied with the MOEA's decision. In this case, the application of Article 33 becomes ambiguous. Because the MOEA is not directly responsible for dealing with intellectual property matters, it is difficult for the MOEA to provide written briefs in response to any new evidence, as required by the Act.
Addressing this issue in its 2010 decision (99-Xing-Zhuan-Geng(1)-2), the IP Court concluded that when the defendant in an administrative lawsuit is the MOEA, the parties could not enter new evidence. The IP Court held that, because the scope of such administrative lawsuits is limited to the legality of the MOEA's decision on the administrative appeal from the party, consideration of new evidence by the IP Court would be ultra vires. Moreover, the IP Court also considered that, because the defendant in such case, i.e., the MOEA, is incapable of satisfying the legal requirement of providing a written response to the new evidence, the IP Court would have no basis on which to consider the merit of any new evidence submitted.
In other words, under the IP Court's current interpretation of Article 33 of the Act, parties of an administrative lawsuit concerning intellectual property may not enter new evidence when the defendant is the MOEA.