Practice Areas | Legal Enforcement | Q & A
E. Procedural steps to trial 2. Is it possible to amend a patent during proceedings and, if so, how?
Yes, the patent owner is entitled to amend the granted claims of the patent at issue and to submit the same to TIPO anytime before the term of the patent at issue expires, if the patent at issue, in part or in entirety of its claims, was not held invalid by TIPO or the Administrative Court under the local practice.
During the civil proceedings, the plaintiff may argue against the defendant's defense of patent invalidity by filing the claim amendment with TIPO or stating that the claim amendment the plaintiff submitted is still pending before TIPO as long as the patent at issue, in part or in entirety of its claims, was not held invalid by TIPO or the Administrative Court, and request the Court to take into account the submitted claim amendment under Article 32 of the Intellectual Property Case Adjudication Rules.
E. Procedural steps to trial 3. Do parties have to provide discovery/disclosure of documents to the other side? (If so, please explain classes of documents)
As a civil law jurisdiction, there is no discovery proceeding in a civil litigation. However, according to Article 344 of the Code of Civil Procedure, a party has the duty to produce the following documents:
1.      documents to which such party has made reference in the course of the litigation proceeding;
2.      documents which the opposing party may require the delivery or an inspection thereof pursuant to the applicable laws;
3.      documents which are created in the interests of the opposing party;
4.      commercial accounting books;
5.      documents which are created regarding matters relating to the action.
Where the content of a document provided involves the privacy or business secret of a party or a third person and the resulting disclosure may result in material harm to such party or third person, the party may refuse to produce such document. Notwithstanding, in order to determine whether the party has a justifiable reason to refuse the production of the document, the court, if necessary, may order the party to produce the document and examine it in private.
E. Procedural steps to trial 4. Are witnesses (fact or expert) deposed?
Yes. According to Article 302 of the Code of Civil Procedure, except as otherwise provided by the laws, every person is under a general duty to testify in an action between others.
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