The amendments of Patent Act (Article 97-1 to 97-4) concerning border protection measures for patents have been implemented on March 24, 2014. Furthermore, the coordinating procedures and regulations concerning “Regulations Governing Customs Detaining Goods Suspected of Patent Infringement” have been promulgated on the same day.
Main points of the “Regulations Governing Customs Detaining Goods Suspected of Patent Infringement” are:
1. A patentee requesting Customs to detain imported articles that are suspected of infringing the patent right(s) shall do so in writing to the customs offices of importation of such articles.
2. The required documents and information for applying for the said request are:
(1)document(s) of proof of the patent right(s); where a utility model patent right is concerned, the technical evaluation report of said utility model shall also be provided;
(2)a copy of the identity document(s), juristic person certificate(s) or other document(s) proving qualification of thedetention requester.
(3)an infringement analysis report and sufficient description for identifying the suspected infringing articles, along with other information including samples, photos, catalogs or pictures of the suspected infringing articles as well as the electronic files thereof.
(4)a sufficient description enabling Customs to identify the articles to be detained, such as the name of the importer, the business administration number or I.D. card number thereof, import declaration number, name, type or specification of the articles, possible importing date, port or vehicle.
(5)a power of attorney, if the detention request is filed by an appointed agent.
3. The detention requester shall, upon immediate notice from Customs, provide a security amounting to the duty-paid price of the imported articles, as assessed by Customs and filea litigation claiming that the detained articles infringe the patent right(s) and notifies Customs of such filing within twelve (12) days following the date of receipt of Customs’ written notice. The owner of the detained articles requesting Customs to repeal detention shall do so in writing to the customs offices of importation of such articles, accompanied by a security or equivalent assurance amounting to two times the duty-paid price of the imported articles. Customs shall retain a representative sample and then repeal the detention.
4. Prior to carrying out the detention, Customs may ask the detention requester to provide assistance. The detention requester or the owner of the detained articles requesting Customs for examining the detained articles, but should refrain from compromising confidential information protection of the detained articles.
5. The detention requester or the owner of the detained articles filing a request with Customs for the return of the security or assurance should provide, if applicable, the following document(s):
(1) a copy of a judgment of the court along with a copy of a certificate stating the judgment is final and binding, or a copy of document which legally have the equivalent effect as a final and binding judgment of the court;
(2) a copy of a settlement agreement;
(3) a copy of the document proving that the other party has been notified to exercise the right within a specified time period of no less than twenty (20) days but has yet to do so within the said period;
(4) a copy of the document proving that the other party has agreed upon such return.
In view of the effectiveness of the border protection measures for patents in Taiwan, the clients’ patent rights can be protected more completely. Please feel free to contact us if you need more information on this matter.
Source: TIPO Newsletter issued on April 05, 2014(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8043.htm)
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
