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The Judicial Yuan held the "Intellectual Property Forum" at the Intellectual Property Court on 7 and 8 May 2012. The chief justices of the Supreme Court and the Supreme Administrative Court moderated the discussions on civil, criminal and administration litigation issues. Many attended the forum, including 38 participants comprised of chief judges, presiding judges and judges from courts of first instance and second instance, and 22 participants comprised of public prosecutors from the Intellectual Property Division of the High Prosecutors Office, representative attorneys and patent attorneys, personnel from the Petitions and Appeals Committee of the Ministry of Economic Affairs (MOEA, the authority in charge of administrative appeal) and representatives from the Intellectual Property Office (IPO, the authority in charge of trademark, patent as well as other IP matters).
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This forum discussed fifteen proposed issues and reached consensus on the following specific issues:
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1.
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The commissioning party's right to utilize the work completed by the commissioned party specified in Paragraph 3 of Article 12 of the Copyright Act is not affected even if the commissioning party fails to pay the agreed remuneration for such work.
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2.
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Either the plaintiff or the defendant is entitled to file an appeal against a ruling on determination of the value of claim in civil litigations pursuant to Paragraph 4 of Article 77-1 of the Code of Civil Procedure.
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3.
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The term "prior use in good faith" specified in Item 3 of Paragraph 1 of Article 30 of the Trademark Act refers to trademarks that were first used in the Republic of China (Taiwan) only, excluding those whose first use took place in foreign countries. Where a prior user executed a license agreement with the owner of a trademark after such trademark had been registered and the agreement is terminated thereafter because the use is not carried out in good faith, the defense of "prior use in good faith" can no longer be cited.
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4.
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Where the invention patentee is found to be a person other than the person entitled to file the invention patent application, the party who is actually entitled to apply for the patent may not request the court to order an assignment of the patent right in question pursuant to Article 767 of the Civil Code, and can only acquire such patent right pursuant to Articles 10, 34 and 67 of the Patent Act If the request of assignment is made through civil proceedings, a favorable judgment confirming the ownership of the patent right may only serve as evidence in support of administrative proceedings.
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5.
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Royalty collected by a licensor before the revocation of the concerned patent right is confirmed to be not deemed as unjust enrichment.
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6.
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Pursuant to Paragraph 2 of Article 40 of the Criminal Code, confiscation of seized goods with a counterfeit trademark may be pronounced separately.
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7.
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After the Intellectual Property Court renders a judgment on the IPO's decision on an invalidation action against a patent, deeming that the concerned patent right should be revoked, the IPO must render a decision that revokes the patent right by way of formality examination and should not consider or examine the revised petition or any new evidence and/or facts provided by the patent right holder.
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8.
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Even though the court has approved the completion of the liquidation of dissolution of a company and the competent authority has officially posted the wording "the liquidation of dissolution of the company has been completed" on the website, the effect of the company being a legal person will not be extinguished as long as the company is still registered as the owner of the concerned registered trademark.
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Although the consensus reached at the Intellectual Property Forum cannot be considered as precedents, the public prosecutors and the judges of the court will usually take such consensus into consideration while examining specific issues of the pending cases. Therefore, the consensus reached by the Intellectual Property Forum does have substantial influence on the investigation and trial of the intellectual property cases.
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