Patent Act: New Amendment to Patent Act has been passed

[2014/01/20]

Taiwan’s Patent Act has been further amended on January 3, 2014. This amendment added the boarder protection against alleged patent infringement (§97-1 through §97-4). The Legislative Yuan has instructed enforcement rules for the amendment shall be promulgated within two months and to have the amendment take effect by then. The highlights of the said boarder protection are as follows:

1. Seizure request: Any patentee who thinks that the goods imported may infringe his patent may request the Custom for seizure of the goods by making a preliminary showing of the facts of infringement in writing and posting a bond equivalent to the after-tax value of the goods to be seized. The seizure procedure is just provisional, and the patentee shall file a patent infringement action with a court within 12 days following that the Custom informs requesting party receipt of his request by the Custom. The Custom upon request may agree to have the requestor and the counter party to inspect the goods seized subject to maintenance of confidentiality of the goods.

2. Annulment of the seizure: The Custom shall annul the seizure if: (A) the requestor fails to file a patent infringement action and inform the Custom of the same within said 12-day period (the Custom may extend the period up to 24 days); (B) the court dismisses the case by a final ruling or renders a final non-infringing judgement; (C) the requestor requests for annulment of the seizure; (D) the counter party posts a counter bond equivalent to two times of the after-tax value of the goods seized. The requestor shall then be responsible for the costs incurred from the seizure such as detention, storage, handling fees.

3. Expenses: If the final judgement finds that the goods seized had infringed the patent, the counter party shall bear costs incurred from the seizure.

4. Damages: On the other hand, if the final judgement finds that the goods seized do not infringe the patent, the requestor shall compensate all damages suffered by the counter party incurring from the seizure and from posting the counter bond.