Direct Patent Infringement in Taiwan

Francisco A. Laguna & Jimmy Wang

Map of Taiwan Photo Credit: U.S. CIA via Wikimedia Commons

Map of Taiwan
Photo Credit: U.S. CIA via Wikimedia Commons

Patent infringement is an area of concern for many companies, including those in the agriculture, biotechnology, cosmetics and pharmaceutical sectors. In a two part-series, we will look at patent infringement cases in Taiwan.

Taiwan is a civil law country. When practicing patent law in-country, it is critical to refer to statutory law. The legal system in Taiwan places emphasis on patent law statutes rather than case law. Previous patent-related court decisions, except Supreme Court decisions, do not serve as precedents and are not binding on other cases.  Therefore, although case law can be instructive, it is essential to focus on the law.

According to the Patent Act, revised in 2011, patent infringement requires the making, offering for sale, selling, using or importing a patented invention without the patent owner’s consent. The Patent Act also provides several circumstances exempting such acts from liability. For example, Article 59 (1) states that patent violations done for private, non-commercial purposes are not subject to prosecution.

Judicial Yuan Photo Credit: Jiang via Wikimedia Commons

Judicial Yuan
Photo Credit: Jiang via Wikimedia Commons

In practice, in addition to the Patent Act, the court generally follows the guidelines issued by Taiwan Intellectual Property Office (TIPO) to decide direct patent infringement cases. The guidelines are based on two basic principles: the “all-elements” rule; and the doctrine of equivalents.

The court will first apply the “all-elements” rule to decide whether the alleged violation satisfies the literal definitions prescribed by the Act by examining each applicable element. If the court does not find literal infringement, the “doctrine of equivalents” will be applied to extend patent right protection, provided the alleged act effectively results in infringement.

National Science Council Photo Credit: Chongkian via Wikimedia Commons

National Science Council
Photo Credit: Chongkian via Wikimedia Commons

In terms of procedure, the parties in patent infringement cases present written submissions, patent infringement assessment reports and other evidence to substantiate their positions. The court will review the facts to determine validity / invalidity, infringement and damages. Courts can form specialized tribunals or assign specific judges / staff to patent litigation cases.  They can also request assistance / guidance from specialized institutions appointed to conduct patent infringement assessment. Such specialized institutions are appointed by the Judicial Yuan, the highest judicial organ in Taiwan. Similarly, the parties may request that the court designate an experienced organization or specialist to conduct such an assessment. Expert witnesses, if any, will be questioned about their conclusions. Technical examination officers may also examine the parties or expert witnesses during the trial.

TransLegal assists companies do business overseas and assess the risks related to each country.  Call us with your questions related to patents and other issues in Taiwan and Asia, generally.

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