Contributory Infringement Concept Not to Be Included into the Patent Act Amendment, A Preliminary Decision of TIPO.

The TIPO hosted the “International Symposium on Patent Contributory Infringement” on July 15 and 16, inviting scholars from the US, Japan, Germany, and their practitioners of legal profession to discuss their countries’ respective laws and legal practices regarding contributory patent infringement and exchange experiences in the subject matter with the judges of Taiwan’s IP Court, scholars, patent litigation attorneys, and representatives from industrial sectors.  All these participants also provided their opinions to Taiwan’s Patent Act revisions.

According to the patent-related laws of all countries, an occurrence of patent infringement is preconditioned on an infringer’s practice of all essential technical features of a patent.  However, the infringer’s practice of only some major parts of a patent could result in contributory infringement that has been out of regulations, and an aggrieved patentee can only rely on civil action according to the Civil Code.  To resolve this problem, the US, Japan, Germany, the UK, and France have stipulations in their patent laws on contributory infringement, and likewise, South Korea completed their legal amendment in relation thereto in 1995.

Absent the stipulations on patent contributory infringement in Taiwan Patent Act, the occurrence of contributory infringement could be regulated only by the provisions with respect to joint tortfeasance of the Civil Code.  The provision of Article 185 of the Civil Code on joint tortfeasance is somewhat lax that it does not satisfy the requirements of industrial development in Taiwan.  Also, in view of the fact that the said provision of Article 185 is not accurately applicable to all occurrences of patent contributory infringement, TIPO sees the necessity of adding contributory infringement concept into the Patent Act.

Thorough discussions and opinions collection on this issue are believed to increase public understanding of legal practices with respect to contributory infringement taken in the countries around the world.  TIPO decided not to include patent contributory infringement into the Patent Act for the time being due to the facts that Taiwan IP Court is now in its initial stage of operation and the industry in Taiwan is going through transformation.  Also, to avoid a circumstance where the initial operation and practice of the new legal system of contributory infringement may cause abuse of right and lawsuit, TIPO thought it more appropriate to assess a new legislation after the IP Court has cumulated more cases in regard to contributory infringement.  Surely it has been noted that a new legal system of contributory infringement would be more imperative for Taiwan as a country of export-oriented industrialization, to keep abreast with current IP laws and affairs around the world.  (2009.07)
/CCS