A defendant in a patent infringement lawsuit, in addition to initiating a cancellation action to the Taiwan Intellectual Property Office (TIPO) for the invalidation of a patent right, can claim invalidity of the patent in the lawsuit.  Pursuant to Article 16 of the Intellectual Property Case Adjudication Act, the civil court shall adjudicate the invalidity defense raised by the defendant on its own; however, such court's ruling has a binding effect only on said suit, and the patent will not be cancelled.

 

Such dual-track design inevitably may lead to a difference of opinion between the civil court and the TIPO, which would then trigger questions about how to deal with the inconsistency.  For example, in the scenario where a civil court has, in a final and irrecovcable binding judgment, determined that the patent asserted is valid and the defendant shall cease its infringement and bear liability for compensation of damages, but the patent is later cancelled under a binding cancellation decision, the question would be: can such subsequent result retroactively affect the binding judgment of the civil court?  The Intellectual Property Court took a negative position in its judgment dated September 5, 2014 under 2013-Min-Zhuan-Shang-Zai-4.

 

The Intellectual Property Court's main reason is that the determination of the civil court on the patent validity was made after evidence investigation and fact-finding procedures conducted by itself and did not rely upon the TIPO's decision of granting the patent at issue; furthermore, Article 16 of the Intellectual Property Case Adjudication Act has already bestowed on the civil court the authority to adjudicate the validity of a patent. The Intelletual Property Court also pointed out that one of the legislative intents behind the Act is to prevent delay in litigation, and that most countries place limitations on the filing of a re-trial.  The Court then concluded that one cannot initiate a re-trial on the ground of a successful patent cancellation to overturn a previous binding civil judgment.