TIPS^®  Taiwan Intellectual Property Special

Patent Infringement Verification Report Can Be Issued by a Non-Appointed Institute

Paragraph 2 of Article 131 of the Patent Law provides that the patentee shall submit along with his complaint the infringement verification report (equivalent to a legal opinion of patent infringement). Paragraph 4 of said Article further prescribes that the Judicial Yuan (the Judicial Branch) and the Executive Yuan (the Cabinet), hereinafter "Appointed Institute", shall coordinate with each other in appointing professional institutions for the infringement verification (Note, up to date, 69 institutes were appointed). Given the above, some foreign patentees confronted with the dilemma that the Taiwanese court refused to recognize the infringement verification issued by a (domestic and/or foreign) institute and/or an objective third party (e.g. expert witness) that was not appointed by the Appointed Institute. Especially, the Supreme Court in 86-Tai-Fei-76, 1997, judgment held that the patent infringement verification report should be issued by an Appointed Institute.

The Ministry of Justice ("MOJ") convened a meeting comprised of the Public Prosecutors of the High Court at the end of last year discussing the issue "whether the filing of a criminal action is legitimate and valid if the infringement verification report submitted along with was not issued by the Appointed Institute (hereinafter "Non-Appointed Institute")." The MOJ in said meeting concluded that "the infringement verification report can be issued by a Non-Appointed Institute and/or an objective third party other than the Appointed Institute, so long as the above-mentioned institute and/or individual is of specialty and expertise on the claims of the patent at issue." The MOJ further elucidated that, the above Supreme Court judgment should not apply to other cases with formal verification reports since in such case, the Complainant only submitted his personal survey/comment rather than a verification report.

In a recent patent infringement judgment, the presiding judge of the High Court followed the above conclusion. The more important development was that, although the Court found the verification report submitted by the Complainant was simply a "comment letter" rather than a formal verification report, the Court did not overrule this action for lack of prerequisite conditions of a complaint; rather, the Court allowed the Complainant to submit another verification report (issued by Molloy Associates, an American institute) to rectify the illegitimacy.

Nevertheless, the Court found the defendant not guilty for that the Complainant failed to demonstrate whether the Molloy Associates are of the capability and qualification to determine the equivalence the Complainant's patented claims and the allegedly infringed products. Moreover, the Complainant did not prove whether the foreign institute has the knowledge and expertise on the Taiwanese Patent Law. In contrast, the defendant submitted three verification reports issued by the Appointed Institutes proving that the defendant's product did not infringe upon the Complainant's patented claims.