Newsletter
PROVISIONAL PATENTS ARE ADEQUATE BASIS FOR LEGAL ACTION
Article 50 Paragraph 1 of the Patent Law pro-vides that a patent becomes provisionally effec-tive from the time when it is allowed and pub-lished. But the law does not explicitly state what legal force a provisionally granted patent has. In particular, it does not indicate whether an act that infringes on a provisionally granted patent con-stitutes an infringement of rights, whether it is possible to institute civil or criminal proceedings, or whether any other remedies are available.
A 1992 interpretation issued by the Ministry of Justice and some 1999 court judgments took the view mainly on the grounds that rights under a provisionally granted patent are as yet uncon-firmed and that an act infringing on such an un-confirmed right did not meet the criteria for the offences set out in the relevant penal provisions of the Patent Law. Therefore at that stage a patent applicant could not file a complaint against another person for infringement of patent rights.
In a 1999 interpretation, the IPO noted that under Article 88 Paragraph 1 of the Patent Law, a patentee may request the prevention of a poten-tial infringement of a patent right. The IPO therefore stated that when a patent application has been allowed and published and the applicant has acquired a provisional patent right, under Article 88 the applicant may issue a friendly warning letter to a potential infringer. But what content is appropriate for such a letter in order to avoid violating the Fair Trade Law, is a different issue for the Fair Trade Commission.
However, the civil division of the Supreme Court, in a 1996 judgment, stated that a provisional patent right becomes effective on publication of the patent examiner's decision allowing the pat-ent application. The Court therefore held that if the patentee's acquisition of the patent right is later confirmed, then a third party who counter-feits and sells a product protected by the patent during administrative appeal or administrative litigation proceedings, is liable for infringement.
In a recent noteworthy development, the criminal division of the Supreme Court ruled in a 2002 case that under the Patent Law, a patent right takes provisional effect when an application is allowed and published. Therefore, until such time as the patent right is deemed to have been non-existent ab initio, it should indeed enjoy the protection of the Patent Law, and anyone who infringes on it should bear civil and criminal li-ability. In support of this view the Court noted that under Article 94 of the law, in the case of civil or criminal proceedings in connection with an invention patent, "investigation or trial pro-ceedings may be suspended until the decision in a patent application, opposition, cancellation or revocation case becomes irrevocable;" it does not provide that civil or criminal proceedings may not be instituted until the outcome of such a case becomes irrevocable.
This important ruling of the Court on the issue of whether civil and criminal proceedings can be based on a provisionally granted patent will have far-reaching effects on patent infringement cases.