Why does this happen that the legally manufactured goods in one country might infringe a prior invention or utility model patent in the other countries when the goods are imported/exported? Most of the times, this is because that a patent is of the nature of territoriality principle; in other words, the patented article may be protected in one country where not in other countries. For such kind of patent infringement, being situated in nowadays with frequent global trades, each country may have its border protection measures with different degrees of protection. For instance, an article infringing patent right may be prohibited from importing into the US, while in EU, China, and Japan, exporting of goods infringing patent rights may be further prohibited as well.
Instead of having the border protection measures for patents being stipulated in Taiwan Patent Act, the local Customs Offices follow “Operational Directions for Customs Authorities in implementing Measures for Protecting the Rights and Interests of Patent and Copyright” with the latest revision of October 1, 2012 to protect the patented goods being infringed. However, per the said Operational Directions, in order to get the actions by customs, the patentee is required to get the ruling of provisional injunction from the court, as well as provide the specific information of the imported/exported goods such as the port of entry, estimated entry date, name of the carrier, etc., so that the Customs Office may take a further action. In view of the complicated procedures, the border protection for the patent rights holders in Taiwan seems insufficient.
Thus, on January 3, 2014, Taiwan Legislative Yuan passed the Patent Act amendment introducing four articles of law to provide the border protection (Article 97-1 to 97-4). An Additional Resolution by the Legislative Yuan also requires the competent Patent Authorities and Ministry of Finance to establish, within 2 months after its promulgation, the coordinating procedures and regulations for performing this amendment. The amendment of law was promulgated by the President on January 22, 2014 and the highlights thereof are:
- Application for detention
The patentee (applicant) may file an application to Customs for detention of goods that are suspected of infringing the rights of patent. The application shall be filed in writing, accompanied by a statement of the facts of the infringement and a security being deposited. On the other hand, the owner of detained goods may also request the Customs Office to repeal the detention by providing a counter-security. Both parties may examine the goods under the conditions where the protection of confidential information in respect of the detained goods are not damaged. - Repeal of detention
Customs shall revoke the detention should any of the following conditions exist: (1) if a civil infringement litigation has not been filed and notice not made with the Customs by the requestor within 12 days after the detention was made; (2) if a litigation has been dismissed; (3) if a final and binding judgment was rendered for non-infringement; (4) if the request is revoked by the requestor, or if the owner of the detained goods provides counter-security. - Expenses incurred by detention
If a court rules finally that the detained goods infringe the patent rights of the detention, the owner of detained goods shall be liable for all relevant expenses incurred as a result of the delay of containers, warehouse rental, loading and unloading of detained goods; otherwise, requestor shall bear the costs thereof. Furthermore, the above-prescribed expenses shall have a priority right to be compensated from the security deposited before the requestor or the owner of detained goods claiming for damages. - Others
The provisions regarding the damages caused by the detention to the owner of goods, the return of security or counter-security, and the authority on detention related procedure, also have been added in the provisions of amendment, respectively.
Nonetheless, it should be noted that Taiwan border protection measures for patents as prescribed above is only applicable to the importation but not to the exportation of goods. Besides, the measures shall be initiated upon the application of the patentee, and the Customs may not ex officio conduct detention of goods.
