Tuesday, August 6, 2013

After a Six-Month Hiatus, Enhanced Damages for Patent Infringement in Taiwan Are Back

This had escaped my attention until today, when I noticed this article by Daisy Wang of Lee & Li.  As I mentioned in my book pp. 370-72, until recently Taiwan had been one of the few countries other than the United States to authorize awards of up to treble damages in cases of intentional infringement; but the Taiwanese legislature deleted this provision from the Taiwan Patent Act when it amended the act in 2011.  The amendment only became effective on January 1, 2013.  So I was surprised to read that the provision on enhanced damages is now back in, after only a six-month hiatus.  (Altogether a small package of amendments to the Taiwan Patent Act were approved in May and went into effect on June 11, as reported in Ms. Wang's article, by IPTaiwan, and by the TIPO, here.  The other amendments require notice for the simultaneous filing of patent and utility model applications; eliminate the possibility of a duplicative recovery for the period of time after the utility model is granted and before the patent is granted; and require the submission of a technical letter before serving a warning letter based on a utility model.)  So here is the English translation of the new text of the Taiwan Patent Act on damages (article 97), downloadable from the last of the preceding links:
The damages claimed pursuant to the preceding article may be calculated according to any of the following methods:

1. the method provided in article 216 of the Civil Code; if no method of proof can be produced to prove the damages suffered, a patentee may claim damages based on the difference between the profit earned through patent exploitation after infringement and the profit normally expected through exploitation of the same patent;
2. the profit earned by the infringer as a result of patent infringement; or
3. the amount calculated on the basis of reasonable royalties that may be collected from exploiting the invention patent being licensed.

Subject to the preceding paragraph, where the infringement is found to be intentionally committed, the court may, upon request and on the basis of the severity of the infringement, award the damages greater than the loss suffered but not exceeding three (3) times of the proven loss.
According to the IPTaiwan link above, prepared by JAW-HWA International Patent & Trademark & Law Offices, a concern was that absent the threat of enhanced damages, infringers would not seek licenses "but prefer to infringe others’ patents."  Maybe so.  But I would be interested in learning what caused this change of heart after such a short time!

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