Newsletter
PRESUMPTION OF RECIPROCITY IN PATENT INFRINGEMENT SUITS
The proviso to Article 91 of the Patent Act stipulates that for a foreign corporate entity to bring a civil suit for patent infringement in Tai-wan under the provisions of the Act, the entity's own country must provide reciprocal treatment to Taiwanese citizens and entities. There has been much disagreement in practice as to whether, when a foreign entity files such litiga-tion, it must first produce evidence showing that its own country accords reciprocal treatment to Taiwanese entities.
In a 2007 ruling, the Supreme Court held that although international reciprocity in terms of ability to file patent applications is different in nature from reciprocity in terms of ability to litigate, if a country permits a foreign entity to apply for patent rights in that country, it can be assumed that it will also permit such an entity to protect such rights through litigation, for only thus would it comply with the legal doctrine that "where there is a right, there is a remedy" (ubi jus, ibi remedium). Therefore, although the proviso to Article 91 of the Patent Act imposes the con-dition of reciprocity, if a foreign entity has ac-quired patent rights in Taiwan, then based on the above doctrine, in principle the entity should be allowed to assert such rights by bringing civil litigation against patent infringement, without the need to produce evidence that its own coun-try does indeed comply with the requirement for reciprocity. Therefore, if an infringer states in its defense that Taiwanese corporations that have acquired patent rights in the country concerned are unable to invoke remedies to protect such rights, the onus is on the infringer to present evidence of such exceptional circumstances.