Newsletter
NO STRICT LIABILITY FOR PATENT INFRINGEMENT
Article 84 Paragraph 1 (first part) of the Patent Act provides that the holder of an invention patent may sue an infringer of the patent for damages. Articles 108 and 129 of the Act apply the same provision mutatis mutandis to new utility and new design patents. Article 61 of the Trademark Act, and Article 29 of the Integrated Circuit Layout Protection Act (ICLPA), contain similar provisions. However, unlike the Copy-right Act and the Trade Secrets Act, both of which expressly provide that in principle an in-fringer is liable to pay compensation only in the case of intentional or negligent infringement, the Patent Act, the Trademark Act and the ICLPA make no explicit provision as to whether liability depends on the infringer being at fault. This has led to widely differing interpretations in practice.
In a 2002 civil appeal judgment in a damages suit for infringement of a new utility model patent, the Taiwan High Court held that the provisions of the Patent Act regarding compensation for infringement are intended for the protection of others, and do not make intent or negligence a criterion for establishing liability; thus they pro-vide for strict liability (i.e. no-fault liability). Therefore any manufacture, sale, or use of products protected by a new utility model patent without the consent of the patentee is an in-fringement of the patent, and in order to uphold the protection of patent rights, the infringer is liable to pay damages, regardless of whether the infringement was intentional, was the result of negligence, or occurred through no fault of the infringer.
However, following a further appeal in the case, in a 2004 judgment the Supreme Court reversed the judgment of the high court, stating that the provision of the Patent Act allowing a patentee to sue for damages if a patent is infringed is by nature a provision to compensate for loss or in-jury resulting from a wrongful act, and in order for liability to be established there must have been intention or negligence on the part of the injuring party.
From the above view of the Court, it would ap-pear that the Trademark Act and the ICLPA also cannot be said to provide for strict liability, so that in order to establish liability for damages it will be necessary to prove intent or negligence.