The Legislative Yuan passed the amendments of Patent Act On January 3, 2014 that includes the addition of 4 border protection provisions (Article 97-1 to 97-4) and a wording revision in Paragraph 2 of Article 143. According to the Legislative Yuan, the coordinating procedures and regulations concerning these amendments shall be established within 2 months after its promulgation and the new Act shall enter into force at that time.
The main purpose of the above-mentioned amendments is to strengthen the protection of patentees which introduces a mechanism of “request to detain” in the Patent Act. Accordingly, a patentee may provide a security in an amount equivalent to the duty-paid price of the imported articles, assessed by Customs, or equivalent assurance to file the request up to Customs to detain importing goods suspected of infringing the patent right. On the other hand, the owner of the detained goods may also provide counter security to file the request up to Customs to revoke the detention.
Main points of the amendments are:
1. Detention procedures
When filing a request for detention up to Customs, the applicant shall make a statement concerning the facts of infringement in writing and provide security. After the request for detention is admitted, Customs should notify the applicant and the owner of the detained goods. Both parties may examine the detailed goods under the condition that the confidential information protection of the detained goods is not damaged.
2. Revocation of detention
After the request for detention is admitted, Customs shall proceed with the revocation of the said request if (1) a civil infringement litigation has not been filed by the applicant within a period of 12 days after the applicant has been served notice of admission of the said request, (2) if a final and binding judgment on non-infringement is rendered by a court of law, (3) if the request is revoked by the applicant actively, or (4) if the owner of the detained goods provides counter security. In addition, the applicant shall bear the costs generated from warehousing, loading and unloading the detained goods if the cause of revocation is attributable to the applicant.
3. Damages
If a final judgment of the court holds that the detained goods do not infringe the patent rights of the applicant of detention, the applicant shall be liable to the owner of the detained goods for the damages caused by detention. In addition, the detention applicant or the owner of the detained goods may request a return of their security and counter security respectively from Customs if a settlement has been reached or consent obtained from the other party.
In view of these amendments involving Customs procedures, the Legislative Yuan asked the Ministry of Economic Affairs and the Ministry of Finance to formulate relevant procedures. To this purpose, TIPO has begun drafting the “Regulations Governing Detention of Suspected Patent-Infringing Goods by the Customs” and expects their implementation within 2 months after promulgation of the amendments.
Source: TIPO News published on January 6, 2014
(http://www.tipo.gov.tw/ct.asp?xItem=503227&ctNode=7123&mp=1)
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
