TW Patent Act Amendment: Introducing Punitive Damages

Initiated by the proposals of the Legislative Yuan, Taiwan’s Patent Act underwent its latest amendment on May 31, 2013 and includes the following changes: the introduction of punitive damages and provisions governing a patent application for invention and a patent application for utility model filed in respect of the same creation by the same applicant on the same date. Compared to the previous amendment approved in 2011 that took effect on January 1, 2013, the latest amendment is narrower in scope with a special emphasis on strengthening protection of applicants and righter holders.

Regarding the latest amendment that took effect on June 13, 2013, the most important change for patent applicants is the revision of Article 32 pertaining to a patent application for invention and a patent application for utility model filed in respect of the same creation by the same applicant on the same date. In that event, the grant of utility model patent usually predates that of invention patent because the former only needs to undergo formality examination. Given this, when the application for invention is considered otherwise patentable after examination, the applicant will be required to make a selection to avoid double patenting. If the invention patent application is selected, the utility model patent right will, accordingly, become extinguished on the publication date of the invention patent, rather than being deemed as non-existent ab initio. This result is called the “continuation of rights.” The applicant that wishes to enjoy this continuous protection should declare in both applications the existence of another application at the time of filing. The amended Article 32 applies only to applications filed on and after June 13, 2013. 

The provision governing the right to claim compensation based on a laid-open invention patent application is also revised so as to coordinate with the continuation of rights. According to the amended Article 41, in the event that a patent application for invention and a patent application for utility model filed in respect of the same creation by the same applicant on the same date, if, after the grant of utility model patent and the laying open of the invention patent application, the creation continues to be commercially exploited by a person having been notified by the applicant, the applicant may claim against that person either the compensation based on the laid-open invention patent application after publication of the invention patent, or the damages for infringement based on the utility model patent right.

For the right holders, the most important change is the introduction of punitive damages to the amended Article 97. In the event of intentional infringement of patent right, the court may, upon request from the right holder and on the basis of the severity of the infringement, award the damages greater than the loss suffered but not exceeding three (3) times the proven loss.

In addition, the May 31, 2013 amendment also modifies the wording of Article 97 and 116, emphasizing that the damages to be awarded to remedy an infringement may be calculated on the basis of but not limited to reasonable royalty, and that the right holder of a utility model patent should not make a warning without first presenting the technical evaluation report of that utility model patent.

With these revisions, the new Patent Act can provide more comprehensive protection for creations. The text of the May 31, 2013 amendment is provided below.

(Source: Taiwan Intellectual Property Office)