9 May, 2019
Article 117 of the Patent Act provides that “Where a utility model patent is revoked, the patentee shall be liable for the damages suffered by other persons as a result of the patentee’s enforcement of the utility model patent right prior to the revocation, unless such enforcement is based on the content of the technical evaluation report of the utility model patent and carried out with due care.”
The IP Court previously held in its judgment 5-Min-Chuan-Shang-Tzu No.30 that despite the above provision, a technical evaluation report is not necessarily required and it is sufficient for the patentee to obtain a patent infringement report issued by a professional firm for enforcing a utility model patent. In its judgment 107-Tai-Shang-Tzu No. 2360, the Supreme Court vacated the IP Court judgment.
The Supreme Court held that because the application only goes through formality examination, the legislative purpose of the aforesaid provision is to prevent a utility model patentee from abusing or improper enforcing patent rights and to increase the patentee’s burden of proving the elements of exemption from liability, and it is necessary to require a patentee of a revoked utility model patent to prove that the patent right has been enforced based on the content of the technical evaluation report and that the due care has been exercised in order to be exempt from liability.
The Supreme Court remands the case back to the IP Court for finding out whether the patentee has applied for the technical evaluation report and if not, whether such conduct constitutes patent misuse.
For further information, please contact:
Jimmy Wu, Tsar & Tsai Law Firm
Patent@TsarTsai.com.tw
