Newsletter
PATENT RIGHTS DO NOT MERELY EXCLUDE INFRINGE-MENT BY OTHERS
If the result of putting one's own patent into practice is covered by what is claimed in another person's patent, does this constitute an in-fringement of the other person's patent rights? This raises the question of whether a patent merely confers the right to exclude infringement by others, or whether it also confers on the pat-entee an exclusive right to practice the patent, including the right of manufacture and sale. This is an important issue that has excited intense discussion and debate between practitioners and academics over the years. Scholars in the field of patents tend toward the opinion that a patent merely confers a right to exclude actions by others. But in practice the courts have taken a different view, holding that a patentee also has the right to actively practice his patent.
In a 1995 criminal judgment, the Changhua District Court stated that the rights conferred on a patentee under Article 102 of the Patent Act (prior to its 1994 amendments) under a new utility model patent, to manufacture, sell, or use the subject matter of the patent, were basic rights. As for the provisions of Article 103 Paragraph 1 of the Patent Act following the 1994 amend-ments, this was a legislative expansion of the rights under a new utility model patent, confer-ring the additional effect of excluding the actions of others; it could not be said that the introduc-tion of this provision caused patentees to lose the original basic rights under their patents. In the case before the court, the defendant had manu-factured the items at issue on the basis of a law-fully acquired new utility model patent, and his actions could therefore not be said to have in-fringed upon the new utility model patent of the plaintiff.
Upon appeal the Taichung Branch of the Taiwan High Court, in its 1997 judgment, upheld the judgment of the lower court, and commented that the Patent Act as a whole comprises three major parts: the granting of patent rights, their practice, and their protection. After the state grants patent rights, the patentee practices his invention or creation on the basis of the rights so granted, and the rights conferred are protected by the author-ity of the state. These three aspects are at the heart of the patent system, and none should be favored at the expense of the others. Otherwise, if a holder of patent rights could only exclude infringement by others, but had no exclusive right of manufacture and sale, this would be as if an owner of property merely had the right to re-claim his property under Article 767 of the Civil Code, but did not have the right to use, profit from, and dispose of such property, as conferred by Article 765 of the Civil Code. This can hardly have been the legislative purpose in establishing the patent system.
A 2000 judgment of the Taipei District Court did not explicitly elucidate whether a patent merely confers a right to exclude others' actions, or also confers active rights of practice. However, finding that the content claimed in the plaintiff's patent differed from that of the patent covering the allegedly infringing goods, the court also stated that as the allegedly infringing goods had been produced on the basis of a lawfully ac-quired patent, their production was naturally the legitimate practice of that patent, and could not be said to infringe upon the plaintiff's patent rights.