Comparison Study on Defense CauseBetween Taiwan and China in Patent Litigations

• Main Authors: Yu-Sheng Chen, 陳郁勝
• Other Authors: none
• Format: Others
• Language: zh-TW
• Published: 2007
• Online Access: http://ndltd.ncl.edu.tw/handle/68605226831810777276

碩士 === 東吳大學 === 法律學系 === 95 === With the arrival of a new economic era and a time of rapid development in electronic technology, a trend of patent competition has emerged among international businesses. Naturally, industries in Taiwan are not apart from this trend. The emergence of intellectual property protection has changed traditional concepts of material property rights. But while industries understand the importance of this, they are often still overwhelmed when faced with patent litigation. They do not usually allocate legal resources when handling patent disputes and actually do not know how to handle them. As a result, departments handling intellectual property rights disputes are often headed up by non-professional personnel, or by patent engineers who are asked to handle patent disputes in addition to their normal duties. In reality, patent litigation needs to be handled by personnel having a certain amount of legal knowledge, as well as a theoretical and practical understanding of various situations that come up in patent law. Practically speaking, there are not many people who possess both qualities at the same time. Since there is no specialized national examination focusing on patent law, most legal personnel have little knowledge of patent law, while those who do generally lack practical experience. As for patent engineers who have so-called technical backgrounds, they tend to have knowledge about patent law, yet lack knowledge or practical experience with civil law, civil litigation or administrative remedies. Those who possess both are few and far between. Since most executives working in the electronics industry possess technical backgrounds, they tend to assume that patent disputes can be resolved by patent engineers. This is a mistaken belief. This tends to place the focus of patent disputes merely within the fields of infringement or non-infringement, daily patent research, or even pre-case technical issues, and decisions are made on applicable laws from a technical viewpoint. However, what needs to be understood is the judge, not the technical background. Judges making decisions about administrative remedies do not possess technical backgrounds, and even if they did, they receive strict legal training. Because of mistaken decision-making, unsuitable personnel are being placed in charge of legal departments, producing negative effects on business. This article will balance the advantages and shortcomings of both by discussing and comparing arguments and positions that may come up in litigation, providing a direction for patent engineers to consider as they prepare for patent litigation. At the same time, comparative infringement law is discussed in order to help legal personnel understand how to identify infringement. This article has consideration value for both kinds of people who have different backgrounds and will provide practical assistance for patent litigation. When a plaintiff seeks to show that a defendant has manufactured and sold an infringing product, the plaintiff will usually attach an appraisal report, as well as an estimate of damages being requested. Because of this, the plaintiff assumes a tremendous working burden during the pre-litigation stage. The most important elements are the establishment of infringement, doctrines of equivalency and estoppel. In mainland China, the important elements are DOE, doctrine of equivalents and estoppel. And in mainland China, when the “all elements” principle is applied, there are “absolute all elements” and “relative all elements.” In Taiwan, scholarly works invoke “relative all elements” (superfluity establishing principle), but this has not emerged yet in practical cases. Next, the defendant must prepare various types of defenses, such as non-infringement, non-validity of the disputed patent, prior existing art or usage arguments… etc. This article will analyze and compare various types of defenses used by defendants in the patent systems used on both sides of the Taiwan Strait. It will first explain defenses under Taiwan’s Patent Law and then explain defenses invoked under mainland China’s Patent Law, followed by an analysis and comparison of the two systems. In mainland China, there is no special administrative court, but rather an administrative litigation unit established within a conventional court. Because of this, there are major differences between mainland China’s system and that of Taiwan, which has its own complaint, pleadings and administrative litigation system. Finally, this article will discuss the issue of patent notice systems. This is one of the major areas of difference between patent systems in different countries. Article 79 of Taiwan’s Patent Law states that inventors and patent holders must display patent certification numbers on patented products or their packaging and require licensees and other authorized users to do the same. Otherwise, they may not request damages. However, this restriction does not apply in cases of patent infringers who know or have reason to know they are infringers. And in mainland China, patent notices indicate rights rather than duties. Damages and losses depend on the nature of the issue. However, a different type of criminal law governs those who misappropriate patent numbers belonging to others.