Answer ... A Taiwan patent is infringed if a party, without authority, “manufactures, makes an offer for sale, sells, uses, or imports for above purposes” the patented article; or where a method patent is concerned, “uses such process, or uses, sells or imports for above purposes the articles made through direct use of the said process” (Article 58 of the Patent Law).
Answer ... Infringement under the doctrine of equivalents is established by the Taiwan IP Office (TIPO) bylaws and Taiwan IP Court practice. Under the Important Notes on Patent Infringement Assessment issued by TIPO, the test of the doctrine of equivalents is applied after the product or process has been recognised as not falling within the literal scope of the properly construed claim. Under this doctrine, infringement occurs if an element, composition, step or combination thereof in the patent claim is altered or replaced, but such alteration or replacement does not result in substantial difference from the perspective of a person with ordinary skill in the art.
Answer ... The Patent Law does not include a rule that is equivalent to Article 271(f) of the US Patent Code. Cases on this aspect are still in the development stage.
In a 2018 decision in a copyright infringement dispute, the IP Court indicated that Taiwan’s courts can exercise jurisdiction over foreign defendants whose products are sold in Taiwan through a website outside Taiwan, even if other infringing conduct took place outside Taiwan, as long as the foreign defendant could have reasonably anticipated Taiwan to be one of its major markets or fields of activity (Hsu v Village Vanguard, 107 Min-Zhu-Kang 1 (IP Court 2018)). If the same theory is applied to patent disputes, then an e-commerce platform outside Taiwan is likely to be held liable for patent infringement if some of the infringing products are sold into Taiwan and this result should have been foreseeable to that platform.
Answer ... Wilful infringement is proved if infringement commences or continues despite the knowledge that a patent will be or has been infringed by such conduct. As IP Court decisions show, the strongest evidence to prove a party’s knowledge is a letter which that party has actually received from the patent owner or licensee indicating how a specific patent is being or has been infringed.
The IP Court is traditionally hesitant to deny wilful infringement upon defendants’ submission of non-infringement analyses prepared by IP professionals. Unsuccessful invalidation actions filed by accused infringers are likewise of doubtful evidential weight to avoid wilful infringement liability. The onus of rebuttal on defendants is even heavier if the analyses or the invalidation briefs are found to contain errors (IP Court, Civil Case 104, Min Zhuan Shang 31). However, cases of successful rebuttal do exist. In Sanofi Aventis v Orient EuroPharma the defendant generic drug company filed a patent invalidation action plus a re-examination against the US counterpart of the Taiwanese patent in dispute and successfully convinced the IP Court that infringement was not wilful (IP Court, Civil Case 98, Min Zhuan Shang 57).
Answer ... The patent owner or an exclusive licensee (unless the licence agreement explicitly provides otherwise) has standing to bring an infringement lawsuit, according to Article 96.4 of the Patent Law.
Answer ... Under the statute of limitations of the Patent Law, a patent owner must file for damages:
- no later than two years after gaining knowledge of the damages and the identity of the infringer; or
- no later than 10 years after the infringement first occurs, whichever is sooner.
Answer ... The basic pleading rule is set out in Article 244 of the Code of Civil Procedure, which requires that a complaint to initiate a civil lawsuit state the following:
- the names of the parties and their respective legal representatives;
- the relief sought;
- the subject of the litigation – for example, specifying the claim(s) of the patent at issue; and
- the factual grounds in support of the relief sought.
Moreover, according to the IP Court’s rules (which are published on its website), complaints should also include:
- the specific legal cause(s) of actions upon which the plaintiff relies to seek the relief (eg, the specific provision of the Patent Law); and
- evidential materials (eg, a sample or photo of infringing products or infringement analysis).
Answer ... Patent infringement actions are filed with and tried at the IP Court, unless the parties have consented to the jurisdiction of a district court before filing or the defendant does not raise an objection to a district court’s jurisdiction where an IP litigation is filed.
The IP Court is noted for its expeditious proceedings. It is not uncommon for the IP Court to issue a first-instance decision in a patent infringement suit within one year.
Answer ... As a centralised forum, the IP Court has jurisdiction over all patent infringement lawsuits where the alleged infringing conduct takes place in Taiwan or the effects of the infringement arise in Taiwan. Both the first and second instances of a civil action related to IP disputes are tried at the IP Court.
Answer ... The fact finders are the judges, as jury trials are not available in Taiwan.
To assist IP Court judges in handling the technical issues in patent litigation and other technology-related disputes, the IP Court has set up a panel of technical examination officers (TEOs), most of whom used to work as senior patent examiners and have specialised skills in various technological fields. While a party may move the court to permit an expert to testify on relevant issues, such motion is subject to the discretion of the judge. Aside from providing necessary technical assistance, including preparing written reports for judges, TEOs may attend court hearings and interrogate parties, witnesses and experts.
Answer ... Generally, the proceedings are divided into three stages. In the first stage, the IP Court assigns an interim docket number for a case and holds one or two hearings to assess the value of the plaintiff's asserted legal claims, so as to determine whether additional court fees should be paid.
In the second stage, the case is assigned to the presiding judge for review. The presiding judge will give the parties the chance to specify their respective disputed and non-disputed issues in the lawsuit. For instance, the plaintiff may assert that specific wording of a patent claim is in dispute and must be construed. Upon expiration of the prescribed timeframe for the parties to raise a new dispute, argument and evidence, the presiding judge will close the preparatory proceeding and set a date for an oral argument proceeding, which is the third stage.
As a rule of thumb, the plaintiff bears the burden of proving that the asserted patent is infringed and the claimed damages were thereby incurred. On the other hand, the defendant challenging the presumed validity of the patent bears the burden of rebuttal.
In the third stage, the judge will hear the oral arguments of the parties and review the merits of the case based on the evidence submitted in the prior proceedings. In principle, the parties will be bound by any stipulation rendered in the preparatory proceeding and evidence not presented by the end of the preparatory proceeding cannot be introduced at the third stage.
Answer ... Under the Patent Law, if an infringement case is established, the patent owner is entitled to claim for injunctive relief, damages and destruction or other necessary measures to dispose of the infringing articles and the materials used in the infringing act. The patent owner can choose one of the following methods for calculation of damages:
- an account of the patent owner’s profits lost due to the infringement;
- an account of profits that the patent owner would have otherwise gained from the patent, minus the account of profits actually gained after the infringement;
- an account of profits gained by the infringer attributable to the infringement; or
- reasonable royalties.
Answer ... A first-instance judgment in a civil lawsuit may be appealed to the second-instance panel of the IP Court and further to the Supreme Court if appellate requirements are met (eg, the value of the asserted claims exceeds a threshold of approximately US$50,000).
The structure of the second-instance proceedings at the IP Court is basically the same as that of the first-instance proceedings. A panel of three judges will be established to review the appeal and may review the appeal independently without giving deference to the findings of the first-instance level. However, this does not mean that a party is free to introduce any evidence it wishes; under Article 447 of the Code of Civil Procedure, evidence not presented in the first-instance proceedings may be precluded from the appellate proceedings.