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PROTECTION AFFORDED BY REINVENTION PATENTS
Article 29, Paragraph 4 of the Patent Law provides that an invention patent may be applied for in respect of a reinvention made utilizing another's invention or utility model. Article 80, Paragraph 1 of the law further provides that the patentee of a reinvention as provided for in Article 29 shall not practice his or her invention without the consent of the patentee of the original invention. However, the law does not explicitly state whether a breach of Article 80, Paragraph 1 constitutes a criminal violation.
In a 1998 criminal judgment, the Taichung District Court held that no criminal violation should be found under the circumstances on the following grounds:
Since the law aims to protect new industrial art created by inventive activity, the law should only penalize plagiary of new industrial art in which patent rights are held. In the case before the court, the defendant produced goods in accordance with his new utility model patent, which was based on an improvement to a utility model patented by the plaintiff. Such improvement has economic value in that it advances industrial art, and as such it should be encouraged; hence the law recognizes reinvention as a form of creative activity.
However, since reinvention utilizes the major technical content of others' patents, in order to respect and protect the rights of original patentees, the law provides that the patentee of a reinvention may not practice that invention without the consent of the original patentee. The purpose of this provision differs somewhat from that of Article 125 of the law, which is intended to penalize those who plagiarize new industrial art in which utility model patent rights are held by others.
In producing products in accordance with his own utility model patent, the defendant did not intend to plagiarize the industrial art patented by the plaintiff. Although the new utility model patent held by the defendant was the result of a reinvention based on the plaintiff's patent, this is not what Article 125 of the law is intended to penalize. Notwithstanding the above, if the defendant's exercise of his new utility model patent rights without the plaintiff's consent, in breach of Article 80, Paragraph 1 of the law, caused loss to the plaintiff, the latter could seek civil remedies.