Newsletter Dec 10, 2016

Whether the decision of an invalidation action against a patent can be the reason for appealing for retrial according to the Code of Civil Procedure?

Legal Context

Taiwan Code of Civil Procedure article 496(11):「Except where the party has filed an appeal to assert the ground for a review or has failed to assert such ground known to him/her, a rehearing action may be initiated to request a review of a final judgment with binding effect in any of the following situations: Where the referenced civil, criminal, administrative judgment, or any other decision or administrative disposition, based on which the judgment was entered, was amended by a subsequent final decision or administrative disposition with binding effect.」
Taiwan Patent Act article 82(2)(i)(ii):「Revocation of an invention patent right shall become final and binding under any of the following circumstances:

  1. where no administrative remedy proceedings are filed in accordance with laws; or
  2. where administrative remedy proceedings are filed but dismissed finally and bindingly.」

Taiwan Patent Act article 82(3):「Where an invention patent is revoked finally and bindingly, the effect of patent right shall be deemed not to have existed.」


In the previous case “ TEKTRO TECHNOLOGY CORP V. LEE CHI ENTERPRISE CO., LTD”, the Intellectual Property Court considered TEKTRO infringed patent no.227463 (‘463 patent) “Bicycle disc brake pad ”of LEE CHI enterprise, and TEKRO filed a revocation to Taiwan intellectual Property Office (TIPO) against this '463patent. The TIPO confirmed the revocation of the '463patent. Therefore, the TEKRO brought a trial action on previous case on the ground of false administrative act made by TIPO for considering TEKRO infringing '463 patent, but the trial dismissed by the Intellectual Property Court. Then the retrial plaintiff (TEKRO) filed the first appeal to Supreme Court. 

Simultaneously, the patentee (LEE CHI enterprise) filed an appeal against the revocation of '463 patent.

The Supreme Court considered that according to Taiwan Patent Act, a patent shouldn’t be revoked until the administrative remedy proceedings are finally and bindingly dismissed. As the administrative remedy proceedings filed by appellant for revocation of the patent are not made final and binding, it’s hard to say that the basis of the original final judgement is not changed. Thus, the dismiss decision of Intellectual Property Court was held. 

Waiting until the patentee’s appealing been dismissed by Intellectual Property Court, the retrial plaintiff brought the trial again to Intellectual Property Court. 

Eventually, the retrial plaintiff brought two actions for retrial at two different time points, so, the issue of this case is whether the retrial plaintiff filed a retrial based on the same cause repeatedly?


According to the Taiwan patent law, revocation of a patent shall become final and binding where administrative remedy proceedings are filed but dismissed finally and bindingly. Even though the original civil judgement on the patent infringement is final with binding force, when the patent is finally and bindingly revoked, the effect of patent right shall be deemed not to have existed from the beginning. As a result, there exists a defect in basis of the original judgement, such that the binding force from the res judicata of the original judgement can’t restrict the retrial plaintiff to bring the action for retrial.


There is no interdependence between the civil procedure and the patent revocation, so the court of the civil procedure shall decide based on the merit of the case when a party claims or defends that an intellectual property right shall be cancelled or revoked. Therefore, the party shall file a declaratory judgment for patent invalidity and provide evidences for revocation of the patent, so that the court of the civil procedure can make a substantive judgement in order to decide whether the patent is valid or invalid.

If the court of the civil procedure has made a judgement that the patent is valid, the revocation of patent made by the TIPO shall not be the cause of the action for retrial. In view of the legal stability, the parties involved in the infringement litigation have opportunities to attack and defend each other, hence if there is no limitation to bring the action for retrial and abandon the original judgement, the system of patent litigation will be imbalanced.



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