PATENT INFRINGEMENT VERIFICATION REPORTS

11/01/1999

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Article 131 of the Patent Law require that a patentee filing a complaint regarding criminal violations append an infringement verification report and a copy of written notice given by the patentee to the infringer requiring the latter to end the infringement. Without these documents, the complaint is not valid. Said Article 131 further provides that the Judicial Yuan and the Executive Yuan should coordinate together in designating specialist institutions for infringement verification. However, it does not explicitly require that the report to be appended when filing a complaint come from an institution so designated, and this has led to much confusion as to whether the report is restricted to one from such an institution.

Accordingly, on 31 March 1994 the National Bureau of Standards, Ministry of Economic Affairs (now the Intellectual Property Office, MOEA) informed the Ministry of Justice by letter that the verification report required under Patent Law is not limited to a report made by an institution designated by the Judicial and Executive Yuans. Nonetheless, in 1997 the Supreme Court ruled that the infringement verification report required under the Patent Law does indeed refer to a report made by such an institution.

However, in August this year the Supreme Court, in another criminal judgment, ruled that said Article 131 refers only to an infringement verification report, and not to an infringement verification report by a specialist institution. Hence it is intended merely to require a patentee to provide a report specifically stating the facts of the infringement, and thereby to delimit the scope of the action; it is not intended to restrict such a report to one issued by a designated institution as referred said Article and thereby to limit the exercise of the right to file a complaint.

This judgment is helpful in clarifying the meaning of infringement verification report in the Patent Law.