SAINT ISLAND INTELLECTUAL PROPERTY GROUP

In a decision on patent infringement by the IP Court in March this year, the patentee was awarded the claimed damages but was denied the claim for an injunction.

The Court’s reasons for denial are two-folded:

1. The right to remove infringement according to Article 106.1 of the Patent Law is granted only when a patentee’s full realization of its patent right is hampered by a third party’s illegal act and the patentee has no obligation to tolerate such act. The provision should be interpreted to mean that the right to remove infringement is existent only when infringement has actually occurred and continues to occur. Past infringement involves damages awards only.
2. The defendant admitted that the concerned products had been sold as trial samples but argued that it had modified the concerned products, denying any act of making, selling and offering for sale the concerned products in Taiwan. The plaintiff, on the other hand, failed to prove that such act still continued at the close of the oral hearing. Therefore, it cannot be held that there is still actual infringement of the patent right. In view of the interpretation of Article 106.1, the plaintiff’s request that the defendant cease acts of infringement not existent is baseless.

According to the Patent Law, when the right to a patent has been infringed, the patentee may request removal of infringement, and when there is a likelihood of infringement, the patentee may seek to restrain infringement. Thus, the Court’s interpretation of the law is disputable. In this case, the plaintiff may at least request grant of an injunction on the ground that the defendant may infringe the patent again in the future. Alternatively, the plaintiff may request that the defendant provide a letter of undertaking not to infringe the patent or that such undertaking be attached to the files of the court. If the defendant refuses to provide such undertaking, the plaintiff will then be in a better position to request the Court to grant the injunction claim.