Newsletter
CLARIFICATION ON PATENT INFRINGEMENT ASSESSMENT REPORTS
According to the Patent Law, a person who in-fringes on a patent owned by another may be subject to both civil and criminal liabilities. Ar-ticles 123 to 126 of the Patent Law specify criminal penalties for infringement by acts of manufacturing a protected product or using a protected process, while Articles 127 to 129 penalize acts of selling, displaying with intent to sell, and importing with intent to sell infringing products.
According to Paragraphs 2 and 3, Article 131 of the Patent Law, when filing a criminal complaint against offenses under Articles 123 to 126 of the Patent Law, the complainant must, among others, submit to the public prosecutor or the court an infringement assessment report (Pre-action Re-port) and a copy of a cease and desist letter is-sued to the alleged infringer. Without these documents, the complaint will be dismissed. Paragraph 4, Article 131 of the Patent Law fur-ther states that the Judicial Yuan and the Execu-tive Yuan shall coordinate together to designate institutions to provide infringement assessment opinions. Currently, 69 institutions are so des-ignated.
The legislative intent of Article 131 is that a Pre-action Report should not be limited to one issued by one of the designated institutions. In-terpretations to this effect were issued by both the former National Bureau of Standards (re-named as the Intellectual Property Office on 26 January 1999) and the Ministry of Justice. However, some judges and public prosecutors have taken the opposite view in individual cases, and in a criminal judgment dated 13 March 1997, the Supreme Court ruled that a Pre-action Report must be issued by a government-designated in-stitution.
In order to enforce the legislative intent of the Patent Law and to reasonably assure the right of patent owners to seek a legal remedy, the Su-preme Court, in a recent judgment dated 25 August 1999, held that the right of citizens to institute legal proceedings is explicitly guaran-teed by Article 16 of the Constitution, which should be protected reasonably; and that Pre-action Report as required under Article 131, Paragraph 2, of the Patent Law is not limited to one issued by a government-designated institu-tion.
To ensure that this new position will be followed, on 26 January 2000, the Supreme Court held a criminal division meeting, and passed a resolu-tion that a Pre-action Report can be issued by an expert or institution with special knowledge and experience, and it needs not necessarily be issued by a government-designated institution. This resolution should further assure a patentee's ability to enforce patent rights, and is indicative of the importance the ROC judiciary attaches to the protection of patent rights.