The Study of Two Approaches to Challenge Patent Validity of the United States of America Law

• Main Authors: Jiun-ru Jang, 張君如
• Other Authors: none
• Format: Others
• Language: zh-TW
• Published: 2010
• Online Access: http://ndltd.ncl.edu.tw/handle/10084144941977332699

碩士 === 國立中正大學 === 財法所 === 98 === Abstract The Intellectual Property Case Adjudication Act (IPCAA) in Taiwan was promulgated on March 28th, 2007 and enforced on July 1st, 2008. According to the Act, the approach to challenge the patent validity separates to two parts: one is to revoke patent right under specific circumstances according to § 67, § 107 and § 167 of Patent Act by TIPO; the other is when a party claims or defends that an intellectual property right shall be cancelled or revoked, the court shall decide based on the merit of the case according to article 16 of The Intellectual Property Case Adjudication Act. The first section of the article 16 of The Intellectual Property Case Adjudication Act provides “When a party claims or defends that an intellectual property right shall be cancelled or revoked, the court shall decide based on the merit of the case, and the Code of Civil Procedure, Code of Administrative Litigation Procedure, Trademark Act, Patent Act, Species of Plants and Seedling Act, or other applicable laws concerning the stay of an action shall not apply.” The second section of article 16 is “under the circumstances in the preceding paragraph, the holder of the intellectual property right shall not claim any rights during the civil action against the opposing party where the court has recognized the grounds for cancellation or revocation of the intellectual property right.” In other words, although the court decides that a patent right shall be cancelled or revoked based on the merit of the case, the patent right is not invalid generally but that the patentee right shall not claim any rights during the civil proceeding against the opposing party. When the approach to challenge the patent validity separates to two parts, it is important to focus on how to avoid the conflicts of determination of patent validity. Under the United States of America law system, there are also two ways to determine whether a patent right is valid. In Blonder-Tongue Laboratories v. University of Illinois Foundation, the U.S. Supreme Court held that when the court determined a patent right is invalid, the patentee will not be allowed to claim her/his patent right against any other person in the future based on collateral estoppel, unless she/he was not given a full and fair chance to litigate in former suit. In our country, we adopt the dual approaches of public law and private law which is so different from the legal system of the United States. So, it is difficult for us to conclude that the civil court’s cancellation/revocation can be against any person. However, it is proper to consider the “issue preclusion ”by article 34 of Intellectual Property Case Adjudication Rules which provides ”Where in a final judgment of an intellectual property civil action that substantively found on the issue as to whether an intellectual property right shall be cancelled or revoked, if in other actions concerning whether the same intellectual property right shall be cancelled or revoked, the same party raises a claim or defense contrary to the gist of the final judgment on the basis of the same basic facts, the court shall make its determination by deliberating on the relevant circumstances such as whether the above final judgment is obviously contrary to the laws and regulations, whether new litigation information emerges that may affect the outcome of the judgment, and the principle of good faith.” In U.S., the patent invalidity litigation system as been enforced for more than two centuries; many issues were raised, discussed and solved, such as the issue about who has standing to sue, who shall bear the burden of proof and the priority of determination between the issues of patent validity and patent infringement. In enforcing Article 16 of IPCAA U.S. practical experiences may be good references for us to solve related-issues efficiently and to reach the goal of IPCAA.