In a decision on patent infringement by the IP Court in March this
year, the patentee was awarded the claimed damages but denied an
injunction.
The Court's reasons for denial were two fold.
First, the right to remove infringement under article 106.1 of the
Patent Law is granted only when a patentee's full realisation of its
patent right is hampered by a third party's illegal act and the patentee
has no obligation to tolerate such an act. The provision should be
interpreted to mean that a patentee only has the right to remove
infringement when infringement has occurred and continues to occur. Past
infringement involves damages awards only.
Second, the defendant admitted that the products concerned had been
sold as trial samples but argued that it had modified them, denying any
act of making, selling and offering for sale the products in Taiwan. The
plaintiff, on the other hand, failed to prove that such acts were still
occurring at the close of the oral hearing. Therefore, it could not be
held that there is still actual infringement of the patent right. In
view of the interpretation of article 106.1, the plaintiff's request
that the defendant cease acts of infringement is baseless.
The Court's interpretation of the law is disputable. According to the
Patent Law, when the right to a patent has been infringed, the patentee
may request removal of infringement, and when there is a likelihood of
infringement, the seek to restrain infringement. In this case, the
plaintiff may at least request an injunction on the ground that the
defendant may infringe the patent again in the future. Alternatively,
the plaintiff may request that the defendant provide a letter of
undertaking not to infringe the patent or that such an undertaking be
attached to the files of the court. If the defendant refuses to provide
one, the plaintiff will then be in a better position to request an
injunction.
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| Frank FJ Liu |
Saint Island International Patent & Law Offices
7th Floor, No. 248, Section 3
Nanking East Road
Taipei 105-45
Taiwan, ROC
Tel: +886 2 2775 1823
Fax: +886 2 2731 6377
siiplo@mail.saint-island.com.tw
www.saint-island.com.tw