To strengthen the protection of the patent rights and the enforcement of the border protection measures for patent rights, the Legislative Yuan, on January 3, 2014, passed the Patent Act amendment through the third reading of the provisions on border protection (i.e., Articles 97-1 to 97-4). In addition, Legislative Yuan passed an ancillary resolution that the supplemental regulations with respect to said amendment be established, and the new Patent Act become effective, within two months after the promulgation of the amendment. Highlights of the newly added border protection provisions are summarized as follows:
- Seizure procedures: Applicants who request the seizure should submit to the Customs a written request to preliminarily show the facts of the infringement and post a security bond. The Customs should notify both the applicant and the owner of the seized article by a written notice upon execution of the seizure.
- Vacating the seizure: The Customs should vacate the seizure in the following circumstances: (1) the applicant for the seizure fails to commence a legal action with respect to the seized article and notify the Customs thereof within twelve days after being served the custom’s notice granting the seizure; (2) the applicant’s legal action regarding the seized article finally denied by the court; (3) the court finally decides that the seized article does not infringe any patent right; (4) the applicant requests to vacate the seizure; or (5) the owner of the seized article posts security bond in an amount equivalent to two times of the security bond posted by the applicant.
- Compensation for damages: Applicants who request the seizure should compensate the owner of the seized article for any damage caused by the seizure or the posting of the counter-security bond in the event that the court finally decides the seized article does not infringe any patent right.
- Release of bonds: The security bond can be released upon applicant’s request in the following circumstances: (1) the applicant obtains a final and binding judgment confirming patent infringement or settles with the owner of the seized article, and thus posting of the security bond is no longer necessary; (2) in the event the seizure is vacated and the owner of the seized article suffers damages as a result of the seizure, or the owner of the seized article obtained a final and favorable judgment, but does not exercise its rights after the applicant’s time reminder; or (3) the owner of the seized article consents to the release of the security bond. The counter-security bond can be released upon the request of the owner of the seized article in the following circumstances: (1) it is no longer necessary to post counter-security bond due to the vacating of the seizure or a settlement between the parties; (2) the applicant obtained a final and favorable judgment but does not exercise its rights after a time reminder of the owner of the seized article; or (3) the applicant consents to the release of the counter-security bond.
In response to said amendment adding the provisions regarding the border protection measures, the Taiwan Intellectual Property Office has started to draft an “Implementing Regulations Governing Seizure of Suspected Patent-infringing Articles by the Customs”.