Newsletter
Estoppel Applies to IP Court Judgments
The Taiwan Patent Act permits "anyone" to file a cancellation action against a patent as long as the action is based on different facts and evidence from those used in a previous cancellation action that has been rejected by the Intellectual Property Office (IPO). This gives rise to the situation where the validity of a patent is challenged repeatedly by the same or different parties, especially if the patent involves infringement lawsuits.
When a number of cancellation actions have been made on the same patent at different times, they may enter the subsequent administrative suit stage. In such circumstances, the administrative court may give inconsistent interpretations over the disputed patent and therefore cause even more disputes among the parties involved. In response to this situation, the Supreme Administrative Court had stated clearly in its judgment No. 102-Pan-576 dated 11 September 2013, that: "Estoppel applies to court judgments." The Supreme Administrative Court has further pointed out: "Under the current patent system, the validity of one patent can be challenged multiple times as long as the grounds are different. However, no matter how many challenges there are, there should be no discrepancies in how the court interprets the disputed patent..."; the Supreme Administrative Court reminded the lower court that a higher level of discretion must be exercised if the lower court would like to overrule the facts established by a previous judgment that has become final and irrevocable. In such case, the court must adhere to proper procedures and place greater focus on the rationale over substantial issues and legal implications.
In judgment No. 102-Pan-576, the Supreme Administrative Court revoked and remanded the original judgment made by the IP Court because the remanded judgment gave a completely different interpretation of the characteristics and purposes of the disputed patent compared with those interpreted in previous judgments.
Also, in this judgment, the Supreme Administrative Court advised the lower court that each of the three judges of the panel in charge of the remanded case may appoint one technical examination officer for assistance so as to include three technical examination officers in total to review the remanded case. The Supreme Administrative Court considered that by this way, the panel may be better informed to deliver an accurate judgment. This recommendation differs from the current practice of the IP Court, where only one technical examination officer is assigned to each case. It remains to be seen how the Supreme Administrative Court's judgment will affect the operation of the technical examination officer mechanism and/or the trial activities of the IP Court in the future.