The Legislative Yuan passed its third reading of “The Amendments of The Patent Act” on January 10, 2014, adding border measures for patent protection. The newly enacted legislation has been enforced since March 24, 2014. Meanwhile, the “Implementation Regulations for Customs Authorities to Suspend Goods Infringing on Patent Rights” was issued on March 24, 2014 by the Ministry of Economic Affairs coordinating with the Ministry of Finance, and has also been enforced since that date.

Border Measures for Patent Protection

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  • The newly enacted Article 97-1 to Article 97-4 of the Patent Act are listed below:

Article 97-1

A patentee may request the Customs Authority for detention of imported articles that are suspected of infringing the patent rights of said patentee.

The request set forth in the preceding paragraph shall be presented in writing, explicating the facts of the infringement, and along with a security in an amount equivalent to the duty-paid price of the imported articles, assessed by the Customs Authority, or with an equivalent assurance.

Customs Authority shall immediately notify the applicant thereof once the request for detention is accepted; where the detention is carried out owing to compliance to the preceding paragraph, the applicant thereof and the owner of detained articles shall be notified in writing.

The owner of detained articles may request the Customs Authority to revoke the detention by providing a security in an amount equivalent to two times the security set forth in the Paragraph 2 or an equivalent assurance while following the procedures in accordance with applicable customs regulations on clearance of imported goods .

Without prejudice to the protection of the confidentiality of the detained articles, the Customs Authority may allow the inspection of the detained articles requested by the applicant thereof or the owner of detained articles.

Where the applicant thereof is awarded an affirmed court ruling stating that the detained articles has infringed patent rights, the owner of detained articles shall be liable for all relevant expenses incurred as a result of the delay of containers, warehousing, loading, and unloading of the detained articles.

Article 97-2

The Customs Authority shall revoke the detention under any of the following conditions:

  1. where the applicant thereof fails to initiate litigation claiming that the detained articles are infringement in pursuance with Article 96 while notifying the Customs Authority within twelve days counting from the date on which the Customs Authority has notified its acceptance of detention requested by the applicant thereof;
  2. where a court ruling dismissing litigation initiated by the applicant thereof alleging that the detained articles are infringements becomes affirmative;
  3. where a final judgment of the court which holds that the detained articles do not infringe patent rights;
  4. where the applicant thereof requests for revocation of the detention; or
  5. the circumstance in accordance with Paragraph 4 of the preceding article.

The Customs Authority may extend the period set forth in Subparagraph 1 of the preceding paragraph by an additional twelve days whenever necessary.

Where revocation carried out in pursuance with Paragraph 1, the Customs Authority shall follow the procedures in accordance with applicable customs regulations on clearance of imported goods.

Where the detention is revoked pursuant to Subparagraphs 1 to 4 of Paragraph 1, the applicant thereof shall be liable for all relevant expenses incurred as a result of the delay of containers, warehousing, loading, and unloading of the detained articles.

Article 97-3

If a final judgment of the court holds that the detained articles do not infringe patent rights, the applicant thereof shall compensate the owner of detained articles for any losses resulting from the suspension of releaseor from the provision of a security as prescribed in Paragraph 4 of Article 97-1.

The applicant thereof shall enjoy the same right as a pledgee in relation to the security as prescribed in Paragraph 4 of Article 97-1. The owner of detained articles shall enjoy the same right as a pledgee in relation to the security as prescribed in Paragraph 2 of Article 97-1. However, all relevant expenses incurred as a result of the delay of containers, warehousing, loading, and unloading of the detained articles as prescribed in Paragraph 4 of the preceding article and Paragraph 6 of Article 97-1 shall be paid prior to compensate the applicant thereof or the owner of detained articles for injury.

Customs Authority shall release the security as prescribed in Paragraph 2 of Article 97-1 upon request by the applicant thereof in any of the following:

  1. where the security is no longer required as the applicant thereof has either obtained a final judgment in his/her favor or reached a settlement with the owner of detained articles;
  2. where the applicant thereof proves that the owner of detained articles has been notified but failed to exercise his/her rights within twenty days or more after the detention is revoked on the grounds prescribed in Subparagraphs 1 to 4 of Paragraph 1 of the preceding article in which the owner of detained articles has suffered from losses owing to the suspension of release, or after such owner has been awarded a final judgment in his/her favor; or
  3. where the owner of detained articles agrees to release the security.

Customs Authority shall release the security as prescribed in Paragraph 4 of Article 97-1 upon request by the owner of detained articles in any of the following:

  1. where the security is no longer required as either after the detention is revoked on the grounds prescribed in Subparagraphs 1 to 4 of Paragraph 1 of the preceding article or such owner has reached a settlement with the applicant;
  2. where such owner proves that the applicant thereof has been notified but failed to exercise his/her rights within twenty days or more after the applicant thereof has been awarded a final judgment in his/her favor; or
  3. where the applicant thereof agrees to release the security.

Article 97-4

The regulations governing the request for detention, revocation of a detention, inspection of detained articles, payment, provision and release procedures for a security or assurance, required documents and other matters to be abided by which set forth in the preceding three articles shall be prescribed by the Competent Authority coordinating with the Ministry of Finance.