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How to Determine Whether a Patent Infringement is out of Intention or Negligence
According to Article 96, Paragraph 2 of the Patent Act ("Act"), the patentee may claim damages for a patent infringement which is out of intention or negligence. According to Article 120 of the Act, the aforementioned stipulation applies mutatis mutandis to utility model patents. Regarding how to determine that the patent infringement is out of intention or negligence, on February 22, 2021, the Intellectual Property Court ("IPC") rendered the 2020 Min Zhuan Shang Zi No. 2 Civil Judgment, clearly indicating the manner in which it is to be judged.
The plaintiff in this case is a patentee of a utility model patent, who alleged that (1) the defendant is liable for damages caused by an infringement of the utility model patent in dispute; (2) the defendant had participated in an exhibition together with the plaintiff, and thus became aware of such patented products, so such infringement is out of intention. The IPC adopted the plaintiff's allegation in the judgment, and concluded that the defendant intentionally infringed upon the patent. The logic of the judgment on determining whether the defendant’s patent infringement is out of intention or negligence is summarized as follows:
1. "Intention" indicates a direct intention with which an actor knowingly and intentionally causes the circumstances that constitute the patent infringement, and an oblique intention with which the actor foresees the occurrence of the patent infringement and it is not against his/her will. As to “negligence,” although not intentionally, if the actor fails to exercise his/her duty of care that the actor should and could have exercised in the circumstances, it is deemed as unconscious negligence; if the actor foresees the occurrence that the patent infringement will occur, but firmly believes that it will not, it is deemed as conscious negligence.
2. In the patent infringement case, the degree of care regarding whether it is feasible to foresee or to avoid an occurrence of the damages for a manufacturer or a competitor in the same trade or business will surely differ from that of a simple retailer or occasional vendor. To determine whether the actor breaches his/her degree of care, case facts should be taken into consideration, including the scale of the business items and sales revenue of each party, specific content of the actual infringement, or whether there is any actual contact, etc.
3. Since registration and publication are required for a patent right, such information can be acquired by anyone accordingly. Hence, when manufacturing and selling such disputed products, the defendant can readily check so as to avoid an infringement of the patent in dispute.
4. The defendant is an ODM manufacturing business, and inquired about the plaintiff's ODM needs when they participated together in the exhibition. In addition, the plaintiff evidenced that defendant and the plaintiff's booths were close to each other, and the exhibition photos also clearly show the plaintiff's products using the patent in dispute, so all the technical features of said patent were revealed and readily known to the defendant. Hence, this is sufficient to adopt the plaintiff's allegation that the defendant's infringement of the patent in dispute is out of intention.