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CIVIL LIABILITY FOR INFRINGEMENT UPON A PRO-VISIONALLY GRANTED PATENT
Article 50 Paragraph 1 of the Patent Law pro-vides that patent rights become provisionally effective when a patent is published following examination. However, the law is not explicit as to what force a provisionally granted patent has, and in particular whether infringement upon it is a criminal offence, and what remedies are available. An opinion issued on 22 May 1992 by the Ministry of Justice, a 1999 High Court judgment, and some 1999 District Court judg-ments, all took the view that infringement of a provisionally granted patent is not a criminal offence under the Patent Law, mainly because the rights in such a patent are as yet unconfirmed. Hence during this period, a patent applicant cannot bring a criminal action for infringement.
However, a 1999 opinion from the Intellectual Property Office states that under Article 88 Paragraph 1 of the Patent Law, where there are grounds for believing that patent rights may be infringed, a patentee may seek to prevent such infringement. Therefore, a person who has ac-quired provisional patent rights may issue a cease-and-desist letter pursuant to Article 88, although how such a letter should be worded in order to avoid contravening the Fair Trade Law is a question of the application of that law by the Fair Trade Commission.
But in a 1996 judgment in a civil damages suit for patent infringement, the Supreme Court held that a patent becomes provisionally effective when published, and that if the patent rights are subsequently confirmed, any third party who counterfeits and distributes the patented product during the opposition period and the course of any administrative appeal or litigation, can be held liable for infringement. Although the Su-preme Court has not thus far elucidated the grounds on which a holder of provisional patent rights may seek civil damages, it will nonethe-less be well worth watching how this judgment affects similar cases.