New Provisions Concerning Border Protection Measures Added to Taiwan Patent Act

The partial amendment to Taiwan Patent Act passed its 3rd reading by the Legislative Yuan on January 3, 2014, which includes addition of four provisions regarding border protection measures (Article 97-1 to 97-4) and a wording revision of the 2nd paragraph of Article 143.  According to the Legislative Yuan’s resolution, relevant corresponding regulations and supporting measures should be established within 2 months after the promulgation and the amended Patent Act shall come into force therefrom.

The ultimate purpose of this amendment is to reinforce the protection of the patent owner.  By reference of relevant foreign legislations, Taiwan Trademark Act, and Taiwan Copyright Act, legislators who proposed this amendment introduced therein a mechanism of “detention request”, according to which a patent owner may request the customs authorities to detain the potentially infringing goods by furnishing a cash deposit or security equivalent to the detained goods’ value.  On the other hand, owner of the detained goods may also provide a counter security to have the granted detention request repealed.  Main points of the added provisions are summarized as follows. 

1.　Detention procedure:  An individual/entity that files a detention request shall make a preliminary showing in writing of the facts of infringement and also provide a cash deposit.  The customs, after confirming the validity of the request, should notify both the said individual/entity and the owner of the detained goods.  Both parties may examine the detained goods on condition that the confidentiality information protection of the detained goods is not compromised.

2.　Repeal of detention:  The detention request will be repealed in the following situations where (1) the individual/entity that files the detention request fails to commence a civil action within 12 days after filing, (2) a final and binding judgment determining existence of non-infringement is rendered by a court, (3) the said individual/entity withdraws the detention request, or (4) the owner of the detained goods (the respondent) provides a counter security.  Moreover, the said individual/entity should bear cost arising from warehousing, loading, and unloading the detained goods if the reason of repeal is attributable thereto. 

3.　Damages:  The individual/entity that files the detention request should be liable for damages caused by the request to the respondent if the court clears the alleged infringement by a final and binding judgment.  In addition, the furnished deposit or counter security is refundable if both parties reach a settlement or the other party consents to the refund. 

The fulfillment of the added provisions requires the customs’ corresponding and supporting practices, and therefore, the Ministry of Economic Affairs and the Ministry of Finance are authorized to formulate relevant supporting procedures and measures required in practice.  Taiwan IPO has also been working on drafting the “Regulations Governing Detention of Suspected Patent-Infringing Goods by the Customs” in support and it is expected that the said Regulations may be promulgated within 2 months after promulgation of the amendment.  (January 2014)
/CCS