An extract from The Patent Litigation Law Review, 3rd Edition

Types of patent

Types of patent include invention patents, utility model patents and design patents. An invention patent covers exclusive rights to inventions based on technical ideas using natural laws. A utility model patent covers exclusive rights for devices based on technical ideas using natural laws, in connection with the creation of a shape, structure or combination of both. A design patent covers exclusive rights for a shape, pattern, colour or combination of these, for an aesthetic item.

The durations of rights granted to an invention, utility model and design patent are respectively 20 years, 10 years and 12 years from the date of actual filing rather than the priority date.

All patents should be filed at the Taiwan Intellectual Property Office (TIPO) for examination or registration. Invention and design patents are required to go through substantive examination by the TIPO to ensure that they meet legal requirements regarding statutory subject matter, enablement, written description, industrial applicability, novelty, non-obviousness and unity. However, utility model patents are only required to go through formal examination, where enablement, industrial applicability, novelty and non-obviousness are generally not examined.

Where regulatory approval is obtained in accordance with applicable laws and regulations for the exploitation of an invention patent involving a pharmaceutical or agrichemical, or the manufacturing process thereof, if such regulatory approval is obtained after publication of the invention patent, the patentee may apply for one and only one extension of the patent term of said invention patent based on the first regulatory approval. The regulatory approval is allowed to be used only once for seeking patent term extension, and the granted patent term extension is five years at most.

Substantive law

Infringement

For a product invention, utility model or design patent, an exploiting act means the act of making, offering for sale, selling, using or importing that product for the aforementioned purposes. For a process invention patent, an exploiting act means:

  1. using the process; or
  2. using, offering for sale, selling or importing for the aforementioned purposes the product obtained directly by that process.

The exclusive patent rights are only enforceable within Taiwan's jurisdiction, and no extraterritorial jurisdiction is, therefore, available.

Where there is a person who has not yet committed an actual infringement but has completed preparatory acts for infringement, the patentee may petition to prevent the person from the acts of patent infringement in order to strengthen the protection of the patent rights. For example, if the person has purchased the machine and raw materials, and has prepared to manufacture and sell products embodying the patented invention, these preparatory acts are likely to eventually infringe the patent rights. Under these circumstances, the patentee does not have to wait for the actual infringement before requesting the infringer to remove the infringement, and the patentee may petition to stop or prevent the preparatory acts from maturing into the occurrence of eventual actual infringement as long as he or she demonstrates the possibility of infringement.

In Taiwan, the Patent Act does not specifically provide joint liability, so the application of joint liability should be supplemented by Civil Code and judicial precedents. Paragraph 1 of Article 185 of Taiwan Civil Code stipulates: '[i]f several persons have wrongfully damaged the rights of another jointly, they are jointly liable for the damages arising therefrom'. In addition, one of the most common acts of joint infringement is the joint tort act, and there are basically three requirements to establish the joint tort, as follows:

  1. there are multiple actors (not all of the actors need to personally implement the tort act). For example, if several persons collude together and implement the tort act by a part of them, the person who takes or recognises the others' acts as his or her own act is also an actor;
  2. every actor needs to meet the requirements of general infringement acts; and
  3. a connection of intent is not required among the actors – only jointly associated acts are required. 'Jointly associated acts' means that any of the actors' negligent acts is a common cause of the damage.

Directors of infringing companies may normally be held liable for infringement under Paragraph 1 of Article 185 of the Taiwan Civil Code, or similar rules related to vicarious infringements, such as Article 188 of the Taiwan Civil Code and Article 23 of the Taiwan Company Act.

The application of the divided infringement under Paragraph 1 of Article 185 of the Taiwan Civil Code is much more uncertain. In a Supreme Court case of 1989 in Taiwan, the Court held that, within the purpose of joint infringement, the tort implementers sharing in a part of the infringement act and mutually taking advantages of the others' acts to achieve the purpose are also joint infringement actors and are jointly liable for the damages arising therefrom. Therefore, it seems that divided infringement where each tort implementer performs a portion of steps to complete an infringement act may be applied in the general civil law regime in Taiwan. Common purpose or direct or control relationships between the actors may be required to prove divided infringement.

Foreign suppliers or accessories may be held liable for infringement under Paragraph 2 of Article 185 of the Taiwan Civil Code, which provides that instigators and accomplices are deemed to be joint tortfeasors. In addition, the court's decision usually holds that instigators' or accomplices' knowledge of the infringement is required for them to be liable.

The scope of a patented invention shall be determined by the claim, and descriptions and drawings may be considered as a reference, but not a limitation, when interpreting the claim. Claims should be interpreted in a reasonable, rather than the broadest, way. The intrinsic evidence (e.g., specification, claims, drawings and file wrapper, and relevant or corresponding cases) and extrinsic evidence (e.g., professional dictionaries, reference books, textbooks, encyclopedias and expert testimonies) may be used as a reference to interpret the claims and the order as intrinsic evidence is applied prior to extrinsic evidence.

The all elements rule must be satisfied when applying either literal infringement or doctrine of equivalents, where the element does not necessarily mean the physical element but the technical feature of the claim. When an accused product or process was literally read on a claim, it is literally infringing on the claim. When the accused product or process was not literally read on a claim but was substantially identical to the claimed invention in aspects of their ways, functions, and results, it still constitutes infringement under the doctrine of equivalents. There are, however, some limitations against the doctrine of equivalents, such as the prosecution history estoppel, prior art defence and donation principle.

A prior arts defence means that when determining whether or not to apply the doctrine of equivalents, if all the technical features of the accused object are the same as a previous single prior art, or a simple combination of a single prior art and the common knowledge of the technical field at the time of filing, then the doctrine of equivalents is not applicable and the accused object does not constitute infringement.

The donation principle means that if a technical feature is disclosed in the specification or drawings of the patent at issue, but is not covered or recited in the claims, the technical feature shall be construed as a contribution to the public, and the patentee cannot claim the doctrine of equivalents on the technical feature that he or she could have claimed but did not claim during the prosecution.

i Invalidity and other defences

At the very least, the bases for bringing an invalidity claim include violation of one of the following legal requirements for a patent:

  1. statutory subject matter;
  2. an invention or design should not be:
    • animals, plants, or essential biological processes for the production of animals or plants, except for processes for producing microorganisms;
    • diagnostic, therapeutic or surgical methods for treatment of humans or animals; or
    • inventions or designs contrary to public order or morality;
  3. the enablement requirement;
  4. the written description requirement;
  5. industrial applicability;
  6. novelty;
  7. non-obviousness;
  8. the first-to-file principle;
  9. the double patenting bar;
  10. the invention or design extending beyond disclosure of the original application; and
  11. the applicant being not entitled to file the patent application.

There is no best mode or method requirement.

Defences to infringement claims include the following:

  1. non-infringement;
  2. acts done privately and for non-commercial purposes;
  3. necessary acts to exploit the invention for research or experimental purposes;
  4. right of prior use. However, this rule does not apply if the person has known about the invention from the patent applicant for less than 12 months and the patent applicant has made a statement reserving his or her right to a patent being granted;
  5. a vehicle merely passing through the territory of this country, or any device of such vehicle;
  6. international exhaustion of owner's rights;
  7. an expired limitation (where the right to prevent and exclude infringement will become extinguished if not exercised within two years after the patentee has become aware of the damage and the person liable for damages, or become extinguished if it is not exercised within 10 years after the acts of infringement);
  8. licence;
  9. upon suing an instigator or accomplice under Paragraph 2 of Article 185 of the Taiwan Civil Code, lack of instigator's or accomplice's knowledge; and
  10. upon suing divided infringer under Paragraph 1 of Article 185 of the Taiwan Civil Code, lack of common purpose or direct or control relationship between the actors of the divided infringement.