TIPS^®  Taiwan Intellectual Property Special

Chasing Taiwanese Liability for Patent Infringement in China

In recent years, Taiwanese enterprises gradually move their manufacturing plants to Mainland China. However, orders from customers are still taken by headquarters in Taiwan for the purpose of quality assurance, in-time shipping, logistic operation, and etc.

The Taiwan High Court recently decided a patent infringement suit, in which a Taiwanese Patentee alleged that a manufacturer in Taiwan took orders to produce components of Model SP150 for bicycles in Mainland China and then shipped directly to the foreign buyers. For there was no sufficient evidence showing the orders to manufacture were taken in Taiwan, the Court ruled in favor of the defendant. Although the defendant has in fact manufactured and sold the patented bicycle components in China, it is not punishable under Patent Law in Taiwan because the infringing activities took place outside the jurisdiction of Taiwan. The decision is final and should not be appealed to the Supreme Court.

In view of the above, the Taiwanese High Court has taken the position that the place of infringement means the place where the infringing activities occur. Under the current circumstances that manufacturing plants are moving to China, the battleground to enforce patent rights moves to China as well. Therefore, a carefully deliberated patent plan and portfolio both in China and Taiwan is getting more and more important.