|
Unlike the criminal procedure system that does not require the concerned parties to pay any court costs, the civil court will accept a case only if the plaintiff, upon the filing of the complaint, pays the related court costs calculated based on "the value of object of action" in accordance with related regulations. The "value of object of action" means the value of the litigated object at the time when the complaint is filed or all interests of the plaintiff to/in the said litigated object. According to the provisions of the Code of Civil Procedure ("CCP"), the court costs and other legal costs shall be borne by the losing party; as for partially won and partially lost cases, the court will indicate the proportion of costs to be borne by each party in its judgment.
|
| |
|
Since patent infringement litigation is a civil action as well, a plaintiff also needs to pay court costs at the time of filing his/her complaint; consequently, the amount of court costs becomes a factor to be considered by the plaintiff before initiating such action. In general, patent owners make at least two claims in the complaint: one is a claim for damages and the other is a claim for infringement prevention (i.e., a permanent injunction). It is clear that the "value of object of action" of the former is the amount of the damages as claimed; however, since the objective of action for the latter is to request the defendant "not to infringe," there is no concrete value for this request; therefore, how to determine the "value of object of action" becomes a problem.
|
| |
|
Article 77-12 of the Code of Civil Procedure provides a solution in this regard, which reads, "Where the value of object of action cannot be determined, it shall be deemed as the minimum amount under which an appeal may be taken to the court of third instance as provided in Article 466, plus one tenth of such minimum amount." (Note: currently, the minimum amount under which an appeal may be taken to the court of third instance is NTD 1.5 million; hence the value of object of action determined in accordance with this provision is NTD 1.65 million.) However, in the past, it was not uncommon for defendants to argue that the value of object of action of a "claim for infringement prevention" was determinable and repeatedly requested the court to investigate and confirm the value thereof, and consequently hindered the court from substantively conducting the trial and delayed the conclusion of the litigation.
|
| |
|
Furthermore, when a patent owner makes a claim for both damages and infringement prevention, whether the court cost should be determined by the sum of their "values of object of claim" or determined by one of them was also a difficult issue of patent litigation practice in the past. From the contents of Article 77-2 of the CCP, which reads, "Where several objects of action are claimed in one case, the values thereof shall be calculated collectively; however, if the objects of action claimed are mutually competitive or selective, the value of object of action thereof shall be determined by the highest one among them. If in a case the derived interests, compensations, stipulated penalties, or expenses thereof are incidentally claimed, their values shall not be calculated collectively," it can be told that the point in dispute of the aforementioned problems is whether it is feasible to recognize an "incidental relation" existing between the claim for damages and the claim for infringement prevention of a patent litigation. If yes, then a collective calculation is not necessary. This is more favorable to patent owners as plaintiffs.
|
| |
|
In its ruling (2008 TaiKan No. 792) made on 11 December 2008, the Supreme Court ruled that although a claim for infringement prevention and a claim for damages are made based on different provisions of the Patent Act, since both of their legal foundations of claim derives from infringement of patent rights, there is an affiliated or implicated relation between them. The Supreme Court thus concluded that these two claims are made incidentally, and hence the values of them shall not be calculated collectively. The IP Court then, in the following years, used the higher of the values of claim for infringement prevention and claim for damages as the basis of calculation of court costs in accordance with the said ruling. Meanwhile, to accelerate the progress of procedure, the IP Court in most cases would, after a brief investigation, use NT 1.65 million as the value of object of action of claim for infringement prevention by directly applying the aforementioned Article 77-12 of the CCP. This practice had quite a positive side in respect to preventing patent infringement litigations from inappropriate delay caused by meaningless procedural issues.
|
| |
|
However, the Supreme Court recently changed its opinion. In its ruling (2013 TaiKan No. 317) made on 24 April 2013, the Supreme Court held that the claim for infringement prevention aims at current and future infringements, and the claim for damages aims at injuries incurred in the past; accordingly, there is no "incidental relation" or "subordination nature" present between them. Hence, their values should be calculated collectively. Moreover, in the aforementioned ruling, the Supreme Court also took the view that it is not appropriate for the IP Court to, without conducting an investigation and explaining why it could not determine the value of object of action of claim for infringement prevention from its investigation result, consider the value of object of action as indeterminable simply because both parties failed to provide bases for calculation.
|
| |
|
The IP Court has changed its practice after this ruling by calculating the court costs with the combined value of values of object of action of a claim for infringement prevention and a claim for damages. As to the value of object of action of a claim for infringement prevention, whether the IP Court will apply the aforementioned Article 77-12 of the CCP and use NTD 1.65 million as the amount, only after a deeper and more substantial investigation, is yet to be seen.
|
