TIPS^®  Taiwan Intellectual Property Special

Court Rules Split on Criminal Sanction of the Utility Model Patent Law Amendment

The newly amended Patent Law completely removed criminal penalties for infringement on New Utility Model Patents and Design Patents. In view of the significant change to the patent system, the implementation of relevant administration and procedural operation will take time. Therefore, the effective date of the Patent Amendment will be deferred at least for one year.

However, before the new law becomes effective the courts split in how to handle new utilitymodel infringement cases. In 89-Jian-San-367 Judgement, The Taipei District Court stated that, since the Executive Yuan had not announced the effective date of the Patent Law Amendment at the time the judgement was rendered, the law before amended is the applicable law. Therefore, the accused would be criminally liable if infringement is found. In this particular case, after comparing the claim chart of the substance, no infringement was found, and a decision of not guilty was rendered.

On the other hand, the Kaohsiung District Court handed down Judgements 91-Zi-390, 92-Yi-337, and 89 Zi-209, applying the Patent Amendment, discharged the accused as the law has abolished the criminal penalties. The Court reasoned in Judgement 91-Zi-390 that the decriminalization of the new utility model patent is to abolish the criminal provisions related to infringement on the new utility model patents; not to amend those provisions. While Article 138 of the Patent Amendment stipulates that “Article 11 of the Patent Law takes effect after the promulgation date. The effective date of the other Articles shall be announced by the Executive Yuan,” the “other Articles” should not include the criminal provision, which has been deleted from the Patent Law Amendment. In general, a deleted provision no longer exists. The Standard Act for Law and Rules provides that a duly deleted law or rule may be published only by its name and effective date, and shall cease to be effective in three days after the publication.” Therefore, there is no “effective date” for a deleted statutory provision.

The above judgements were issued by district courts. They may be subject to review by appellate courts. As the Patent Law Amendment has been promulgated for about 2 months and is not effective yet, it is not clear how the court would handle cases in connection with the criminal liability for utility model patent infringements. It is expected that the Patent Amendment would not become effective until the middle of 2004. From present to the effective date, the principles of criminal law require application of the new law, and it is predictable that the new law is favorable to the offender. Nevertheless, in the reality, it all depends on the facts and court decisions.