Newsletter
Technical Evaluation Report of Utility Model Patent and the Due Care Obligation of the Patentee
According to the existing Taiwan Patent Act, after a patent application for utility model is published, any person may file a request with the Specific Patent Agency for a technical evaluation report of the utility model patent, and the Specific Patent Agency shall publish the aforementioned request in the Patent Gazette. With regard to the obligation that a patentee of utility model patent should present the technical evaluation report of utility model patent, Article 105 of the Taiwan Patent Act enacted in 2003 used to provide that:
In case the patent right of a utility model is revoked, the patentee shall be liable for the damages sustained by any other persons from the exercising of such utility model right by said patentee prior to the revocation thereof. In the case set forth in the preceding Paragraph, if the exercise of the utility model patent by the patentee is carried out based on the contents of the technical evaluation report associated with said utility model, or with due care by the patentee, it shall be presumed that the patentee has done no fault in exercising the utility model patent right.
The aforesaid provision of the Taiwan Patent Act enacted in 2003 was later amended to Article 117 in the existing Taiwan Patent Act enacted in December 21, 2011:
Where a utility model patent is revoked, the patentee shall be liable for the damages suffered by another person due to the patentee’s exercise of utility model patent right prior to its revocation. The above shall not apply if such exercise is based on the content of the technical evaluation report of utility model patent and carried out with due care.
It is understood that the proviso in said Article 117 of the existing Taiwan Patent Act was inherited from Article 105, Paragraph 2 of the Taiwan Patent Act enacted in 2003, requiring the patentee to exercise the utility model patent right based on the contents of the technical evaluation report associated with said utility model and with due care.
As to the “due care” paid by the patentee of utility model patent, according to the example cited in the ratio legis of Article 105, Paragraph 2 of the Taiwan Patent Act enacted in 2003 (equivalent to said Article 117 of the existing Taiwan Patent Act), if the patentee of utility model patent does not exercise the utility model patent right until the said patentee has discreetly consulted with relevant professionals (such as attorneys, professionals and patent attorneys), and has a substantial degree of certainty in said patent right, then the said patentee is deemed to carry out the exercise of utility model patent right with due care, and shall not be directly held liable for the damages incurred thereof even though the said patent right is revoked afterwards.
According to the grounds of decision in 2020 Min Zhuan Shang Zi No. 11 Civil Judgment rendered by the Intellectual Property Court, the patentee of utility model patent has formed a reasonable certainty that the patent at dispute is valid and that the product at dispute infringes the patent at dispute based on the following facts: first, the said patentee of utility model patent applied to the Intellectual Property Office for a technical evaluation report associated with said utility model patent, with the comparison results of all claims in said technical evaluation report categorized as " Code 6"; next, after the said patentee consulted the professional advice of the attorneys and intellectual property firm, the attorneys appointed by said patentee did not send letter to the alleged infringer until the said attorneys, to the best of their expertise and knowledge, had examined said technical evaluation report issued by the Intellectual Property Office and patent infringement assessment report, and believed that the content thereof had no problem; and lastly, the patent infringement assessment report held by said patentee did not contain any objective and unprofessional defect. As a result, even though said patent right at dispute is revoked afterwards due to an administrative invalidation decision, it is not foreseen by said patentee upon exercising said patent right. The said patentee should be deemed to have exercised said patent right at dispute with due care and should not be held liable for the damages under Article 117 of the existing Patent Act.
As formality examination, not substantive examination, has been adopted in the utility model patent application since the Taiwan Patent Act amendment was enacted in 2003, the Taiwan Patent Act provides that patentees should present the technical evaluation report associated with said utility model patent as the objective information for the validity of the said patent right when exercising a utility model patent so as to urge the said patentee to exercise the patent right discreetly and adequately. Since it may take time to apply for a technical evaluation report of utility model patent, occasionally a patentee of utility model patent, upon emergency, hastily exercises the patent right before obtaining a technical evaluation report thereof. Nevertheless, as the proviso in Article 117 of the existing Taiwan Patent Act clearly provides that the patentee’s exercise of the utility model patent right should be carried out based on the contents of the associated technical evaluation report and carried out with due care, both the report and due care are indispensable. Consequently, due attention should be paid to this provision as it offers an important evidence for exemption from the liability of infringement.