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Laws & Regulations Database of The Republic of China (Taiwan)

Print Time:2024/05/21 22:01
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Chapter Law Content

Title: PATENT ACT CH
Category: Ministry of Economic Affairs(經濟部)
Chapter II Invention Patent
Section 7 Damages and Litigation Action
Article 96
Right to claim in the event of patent right infringement
A patentee of an invention patent may demand a person who infringes or is likely to infringe the patent right to stop or prevent such infringement.
In case an infringement of invention patent occurs due to intentional act or negligence, the patentee may claim for damages suffered therefrom.
When making a demand pursuant to Paragraph 1, the patentee may request for destruction of the infringing articles or the materials or implements used in the infringing act, or request for other necessary disposal.
An exclusive licensee may, within the licensed scope, make demands in accordance with the preceding three paragraphs. However, if it is otherwise provided for in an agreement, such agreement shall prevail.
Where the inventor’s right to be indicated as such is infringed, the inventor may request for necessary disposition(s) to have his/her name indicated or to restore the impaired reputation.
The rights to claim as set forth in Paragraph 2 and the preceding paragraph shall become extinguished if not exercised within two (2) years after the patentee has become aware of the damage and the person liable for damages. This right shall also become extinguished if it is not exercised within ten (10) years after the time of infringement.
Article 97
Calculation of damages
The damages claimed pursuant to the preceding article may be calculated according to any of the following methods:
1. the method as set forth in Article 216 of the Civil Code; if no method of proof can be produced to prove the damages suffered, a patentee may claim damages based on the difference between the profit earned through patent exploitation after infringement and the profit normally expected through exploitation of the same patent;
2. the profit earned by the infringer as a result of patent infringement; or
3. the amount calculated on the basis of reasonable royalties that may be collected from exploiting the invention patent being licensed.
Subject to the preceding paragraph, where the infringement is found to be intentionally committed, the court may, upon request and on the basis of the severity of the infringement, award the damages greater than the loss suffered but not exceeding three (3) times of the proven loss.
Article 97-1
Border measures: detention request, security and counter security
A patentee may request Customs to detain the imported articles that are suspected of infringing the patent right(s).
The request referred to in the preceding paragraph shall be made in wring, accompanied by the preliminary showing of the facts of infringement and a security amounting to the duty-paid price of the imported articles, as assessed by Customs, or equivalent assurance.
Customs shall immediately notify the detention requester upon acceptance of the request. Having deemed such request to be in compliance with the preceding paragraph, Customs shall notify in writing both the detention requester and the owner of the detained articles when carrying out the detention.
By providing a security amounting to two times the security or equivalent assurance referred to in Paragraph 2, the owner of the detained articles may request Customs to repeal the detention and to follow the procedures under applicable regulations governing customs clearance of imported articles.
Customs may allow the detention requester or the owner of the detained articles to examine the detained articles, provided that confidential information protection of the detained articles is not compromised.
If the detention requester obtains a court judgment deeming that the detained articles infringe the patent right(s), the owner of the detained articles shall be liable for relevant costs including demurrage, warehousing, loading, and unloading.
Article 97-2
Border measures: repeal of detention and subsequent procedures
Customs shall repeal the detention in case of any of the following:
1. customs has not been notified by the detention requester, within twelve (12) days following the date of Customs’ acceptance of the request, that a litigation claiming that the detained articles infringe the patent right(s) has been initiated in accordance with Article 96;
2. a litigation initiated by the detention requester claiming that the detained articles infringe the patent right(s) has been dismissed by a final and binding court judgment;
3. a court of law in a final and binding judgment has held that the detained articles do not infringe patent right(s);
4. the detention requester has requested the repeal of detention; or
5. the condition stated in Paragraph 4 of the preceding article has been met.
If necessary, Customs may extend the time period as prescribed in Subparagraph 1 of the preceding paragraph by another twelve (12) days.
Customs repealing the detention in accordance with Paragraph 1 shall follow the procedures under applicable regulations governing customs clearance of imported articles.
If the detention is repealed in accordance with Subparagraphs 1 through 4 of Paragraph 1, the detention requester shall be liable for relevant costs including demurrage, warehousing, loading, and unloading.
Article 97-3
Border measures: compensation and return of security
If a court of law in a final and binding judgment has held that the detained articles do not infringe the patent right(s), the detention requester shall be liable to compensate the owner of the detained articles for the loss incurred from such detention or from providing the security as prescribed in Paragraph 4 of Article 97-1.
The detention requester enjoys the same right as a pledgee regarding the security as prescribed in Paragraph 4 of Article 97-1; the owner of the detained articles enjoys the same right as a pledgee regarding the security as prescribed in Paragraph 2 of Article 97-1. Notwithstanding the foregoing, the relevant costs including demurrage, warehousing, loading, and unloading as prescribed in Paragraph 4 of the preceding article and Paragraph 6 of Article 97-1 shall be paid prior to compensation for the loss suffered by the detention requester or the owner of the detained articles.
In case of any of the following, Customs shall, upon request from the detention requester, return the security as prescribed in Paragraph 2 of Article 97-1:
1. the security is no longer required as a final and binding court judgment has been rendered in favor of the detention requester or the detention requester has reached a settlement with the owner of the detained articles;
2. where the owner of the detained articles has suffered loss due to a repeal of detention in accordance with Subparagraphs 1 through 4, Paragraph 1 of the preceding article, or where a final and binding court judgment has been rendered in favor of the owner of the detained articles, the detention requester proves that the owner of the detained articles has been notified to exercise the right within a specified time period of no less than twenty (20) days but the owner of the detained articles has yet to do so within the said period; or
3. the owner of the detained articles has agreed upon such return.
In case of any of the following, Customs shall, upon request from the owner of the detained articles, return the security as prescribed in Paragraph 4 of Article 97-1:
1. the security is no longer required as the detention has been repealed in accordance with Subparagraphs 1 through 4, Paragraph 1 of the preceding article, or a settlement has been reached between the owner of the detained articles and the detention requester;
2. where a final and binding court judgment has been rendered in favor of the detention requester, the owner of the detained articles proves that the detention requester has been notified to exercise the right within a specified time period of no less than twenty (20) days but the detention requester has yet to do so within the said period; or
3. the detention requester has agreed upon such return.
Article 97-4
Border measures: formulation of procedural regulations
The competent authority shall, in coordination with the Ministry of Finance, formulate regulations governing the request of detention, repeal of detention, examination of detained articles, the procedures involving payment, provision, and return of security or assurance, provision of required documents, and other requirements, as prescribed in the preceding three (3) articles.
Article 98
Marking of patent certificate number
The patent certificate number shall be marked on the patented article. If such marking cannot be fixed on the patented article, the patentee may make such marking on the labels or packaging, or make such marking in a distinct way sufficient to draw people’s attention. Where no patent marking is made, evidence shall be produced when claiming damages to prove that the infringer knows or has a reason to know that the said article is under patent protection.
Article 99
Presumption of manufacturing process used
Where an article produced following a manufacturing process is still unknown within and outside of this country before the filing of a patent application for the manufacturing process, another article identical thereto made by another person shall be presumed to have been produced following the said manufacturing process.
The presumption made under the preceding paragraph may be rebutted by providing proof to the contrary. A proof made by the defendant that the process used in manufacturing the article at issue is different from the patented process shall be deemed as proof to the contrary. The legitimate rights and interests with respect to manufacturing and trade secrets disclosed in the defendant‘s evidence shall be fully protected.
Article 100
Forwarding a certified copy of judgment
A court of law shall forward to the Specific Patent Agency a certified copy of the judgment issued thereby for a litigation case involving invention patent.
Article 101
Acceleration of invalidation proceedings
Where an invalidation action involves the trial of an infringement litigation case, the Specific Patent Agency shall give priority to such invalidation proceedings.
Article 102
Unrecognized foreign juristic person or organization
An unrecognized foreign juristic person or organization may file civil suits in respect of the matters governed by this Act.
Article 103
Patent infringement assessment
A court of law may form specialized tribunal(s) or assign specific staff members to take charge of invention patent litigation cases.
The Judicial Yuan may designate specialized institution(s) to conduct patent infringement assessment.
A court of law in processing a litigation pertaining to an invention patent may request the specialized institution(s) designated according to the preceding paragraph to conduct patent infringement assessment.
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