The doctrine of "indirect infringement" has long been introduced into the patent systems of European countries and the United States. While there are similar regulations in the patent systems of Asian countries such as Japan and South Korea, no substantial regulations governing conducts involving indirect infringement are embraced in Taiwan's Patent Law. It is thus not of rare occurrence in Taiwan that patent owners proceed to take actions against non-direct infringers by resorting to the Civil Law, alleging that they are joint infringers.
Before the comprehensive overhaul of Taiwan's Patent Law in 2011, the Patent Office had made an effort to introduce "indirect infringement" into the Patent Law so that it may take precedence over the doctrine of "joint infringement" defined in the Civil Law. Ideally, such design would allow patent owners to prevent a component of a patented invention from entering into the market at an earlier stage and to seek remedies before the occurrence of direct infringement.
It was recited in the 2009 draft amendment that "it is an act of infringement to offer for sale or sell a component of a patented invention to a party, knowing that such component is especially made or especially adapted for use in an infringement of such patent; however, this provision shall not apply if the component is a staple item." Although such provision only introduced the concept of "contributory infringement" in a conservative manner, it did not make into the final Amendment.
The IP Office has recently reiterated the necessity of introducing "indirect infringement" into the Patent Law. During meetings held with parties from various industries, the IP Office offered a wide range of topics, including: the definitions of "components" and "contributory infringing acts"; the degree of evidence necessary to attest to the subjective intention of indirect infringers; whether the establishment of direct infringement is to be recognised as a requisite element to indirect infringement; and damage calculation and remedies available to patent owners, and so on.
While the prospect of introducing "indirect infringement" into the Patent Law is welcomed, not a few concerns are also brought up. It will be worth observing the contents of the new draft regarding "indirect infringement" whenever proposed by the IP Office.
Saint Island International Patent & Law Offices
7th Floor, No. 248, Section 3
Nanking East Road
Taipei 105-45, Taiwan, ROC
Tel: +886 2 2775 1823
Fax: +886 2 2731 6377