TIPS^®  Taiwan Intellectual Property Special

Measures for Post-Decriminalization of a Patent Infringement

The newly amended Patent Law (Patent Law Amendment) in Taiwan, promulgated on February 6, 2003, completely removed criminal penalties for utility model (UM) and design patent infringement. In view of the significant changes to the patent system, the implementation of relevant administration and procedural operation will take time. Therefore, Article 138 of the Patent Law Amendment stipulates that the effective date of the Patent Law Amendment will be announced by the Executive Yuan (Taiwan Cabinet).

In March 2003, our TIPS reported split decisions by different district courts regarding new utility model infringement before the effective date of the Paten Law Amendment. The split was finally resolved by the Executive Yuan, which announced on March 31, 2003 that the elimination of criminal penalties in the Patent Law Amendment took effect. Since then, patent infringement is completely decriminalized, and is subject solely to civil liabilities. Therefore, police raid or search and seizure under the Criminal Procedure Law, which has long been considered powerful and threatening enough to stop infringing activities, is no longer available for prosecuting patent infringements. In replacing, provisional remedies are sought in the early stage of patent litigation to stop the illegal activities. The provisional remedies in civil procedure include provisional seizure and provisional injunction. In general civil cases, provisional seizure takes property into custody to ensure payment of damages if tortuous act is later found in the trial. In patent litigation cases, apart form the general property of the accused, the equipment used for infringing activities are also subject to said seizure. On the other hand, provisional injunction is to enjoin the accused from continuing the alleged infringing activities.

Like the preliminary injunction in U.S. litigation, a bond is required for all the provisional remedies. However, the petitioner only needs to state a reason for seeking the provisional remedies, and the court will only examine the reason to the minimum extent. Whether the petitioner is likely to success in the merits or whether there is any irreparable harm if the provisional remedy is denied is not a question at this stage. A request for an provisional remedy can be brought at any time of litigation, even before the litigation is brought. Under the circumstances, it can be said that, so long as the bond is paid, a provisional remedy will be granted. Nevertheless, the accused is entitled to request the petitioner (plaintiff) initiate a lawsuit regarding the alleged patent infringement. However, the provisional remedies will remain effective until the court finds that the accused prevails.