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Article 17 of the Intellectual Property Case Adjudication Act, which came into effect on July 1, 2008, stipulates that if a litigant (usually a defendant) claims patent invalidity during a litigation, the court can, in its discretion, ask the Taiwan Intellectual Property Office (TIPO) to act as an "intervention party" to the litigation in order for the latter to express its views on the validity of the patent. Such "intervention" is by nature "supportive," and therefore Article 61 of the Code of Civil Procedure should apply, which stipulates that "an intervener may conduct all acts of litigation for the supported party according to the phase of litigation at the time of intervention, except for acts that contradict the acts conducted by the supported party..." This means that when intervening in a litigation, the TIPO should not only express an opinion with respect to the validity of the patent at issue but it should also assist only one of the litigants, the plaintiff or the defendant.
However, under the current system, the defendant to a patent litigation may also initiate a cancellation action with the TIPO to invalidate the plaintiff's patent. If such action is still pending, the TIPO will be put in a difficult situation as it would not be able to express any opinion on the patent validity or decide which of the litigants it should "assist." Even if there is no cancellation pending before the TIPO, as a third party to the litigation, it is also difficult to request that the TIPO examiner should carefully review and study the files of the litigation, fully comprehend the dispute between the parties and then give their opinions during the litigation. Given that there has been little benefit from the TIPO's intervention in a patent litigation, it seems that the Intellectual Property Court (IP Court) had not actively engaged the help of the TIPO during a litigation at the initial stage of its operation.
As a result, the Supreme Court had on numerous occasions between 2009 and 2011 reiterated the importance of the "TIPO's intervention in a litigation," in its Judgment Nos. 2009-Tai-Shang-2373, 2010-Tai-Shang-112, 2011-Tai-Shang-480, 2011-Tai-Shang-1013, and 2011-Tai-Shang-986. In particular, the TIPO's intervention in a litigation deserves consideration if it has rejected a cancellation action and the court is leaning towards overturning the TIPO's position. The Supreme Court even pointed out in Judgment No. 2011-Tai-Shang-986 that if a cancellation action is pending before the TIPO, the IP Court should consider whether to seek the TIPO's professional opinion after the cancellation action becomes final.
As the Supreme Court has reiterated the aforementioned principle in its judgments, it appears that the IP Court tended to order the TIPO to intervene in the patent litigation to avoid any procedural defects. However, the situation remains; that is, it is difficult for the TIPO to concretely express any opinions with regard to patent validity. Hence, even if the TIPO is ordered by the court to intervene in the litigation, such intervention is no more than a formality with little substantive effect. More specifically, the requirement for "the TIPO to assist a litigant" provided in the Intellectual Property Case Adjudication Act has become superfluous. In its Judgment No. 2013-Tai-Shang-1800 dated September 25, 2013, the Supreme Court gave specific instructions on the improvement to be made by the IP Court.
According to the aforesaid judgment of the Supreme Court, when ordering the TIPO to intervene in a litigation, the IP Court should expressly state the litigating party to be assisted by the TIPO so that the TIPO can follow the instruction and submit appropriate arguments. The Supreme Court pointed out that the IP Court's failure in specifying which party the TIPO should assist or in requesting the TIPO to express which party it would like to assist has run counter to the legislative intent of the Intellectual Property Case Adjudication Act. The Supreme Court also criticized the IP Court's listing of the TIPO as an intervention party of the defendant without performing the above-mentioned procedures in advance.
It remains to be seen whether the Supreme Court's view will cause procedural confusion with respect to the TIPO's intervention. Doubts are obviously related to the circumstances under which the IP Court can order the TIPO to assist the plaintiff to secure the patent validity, and situations under which the court can order the TIPO to assist the defendant to support its position of the invalidity of a patent. This would be particularly difficult if a cancellation action to be heard by the TIPO has not yet concluded.
