Three Institutions Of U.S. Patent Litigation─The Adaptive Strategies Of Taiwan’s Technology Companies in the United States.
Date Issued
2014
Date
2014
Author(s)
Wang, Mei-Yin
Abstract
As the greatest economy and business in the world, the U.S. is not only a huge market with booming opportunities but also a main field of patent litigation for high-tech industry with its comprehensive patent law and judicial review system. In the U.S. patent-related system, the three main sites where the patent owner and the alleged infringing company attack and defend include the United States Patent Trademark Office (USPTO), the US Federal Court (Federal Court), and the US International Trade Commission (ITC). Inventors submit patent applications to USPTO, and it then in charge with the examination-related work. “Leahy-Smith America Invents Act” (abbreviated AIA), promulgated on September 16th 2011, is the biggest amendment of the U.S. patent law in the past six decades. The amendment retains the Ex Parte Reexamination, replaces the Inter Partes Reexamination with Inter Partes Review, and adds Post-Grant Review. As a result, the chance for a third party to challenge the validity of issued patents by means of the USPTO proceedings is expected to rise. ITC is a quasi-judicial Federal agency, which is in charge with affairs relevant to trades and has a broad power of investigation. In patent infringement cases, according to Article 337 of the Tariff Act, the border protection measures, ITC is allowed to investigate the allegedly infringing product under the application of the patentee when the product adopts unfair acts or methods of competition during import. ITC is also entitled to issue exclusion order and cease and desist order to prohibit sales of related products into the U.S. To block the entry of the allegedly infringing product into the U.S. market, ITC offers a more comprehensive and rapid way to clamp competitions and force reconciliations. The U.S. Federal Court is the most important field in American patent litigation. In Federal Court, the patentee is able to obtain monetary compensations and injunctions that ban the sales of infringing products at the same time. The U.S. Federal Court is different from the Taiwan Law System. In comparison to the Taiwanese system, proceedings of discovery and cross-examination are more complicated in the U.S. system. In addition, the American attorneys’ fees are expensive; an average case costs around $1.8 million. The huge litigation fee and attorneys’ fee are a great burden to Taiwanese companies. Hence, understanding the relevant judicial proceedings in the U.S. is the only way to get bargaining chips in litigation cases. The starting point of this study is the stance of high-tech companies in Taiwan. By reviewing existing literatures and relevant theories, this study draws on the structure of the three main institutions of patent litigation so as to find out the coping strategy in each stage, evidenced by practical cases. The corporate should try to establish a preventive mechanism and standard operating procedures (SOP) to deal with patent litigations.
Subjects
USPTO
Inter Parte Review
Post-Grant Review
ITC
Article 337 of the Tariff Act
Cease and Desist Order
Federal Court
Discovery
Type
thesis