Incorporation of border protection and seizure procedure to Patent Act in Taiwan

On January 3, 2014 an amendment to the Patent Act (the “Act”) was passed by the legislature to introduce border protection into the Patent Act as proposed by legislator Lee Guei-min, et al. The revision was promulgated by the President on January 22 and is expected to go into effect in two months.  The scope of the amendment largely includes (i) the seizure procedure, (ii) revocation of seizure and (iii) damages.

In order to apply for seizure, the applicant must state in writing the relevant facts and furnish a security bond, and upon the notification by the Customs, both the applicant and the respondent may examine the seized goods provided the integrity of the data including its confidentiality will not be compromised during the examination.

Within 12 days after the applied-for seizure, if the applicant fails to bring an infringement lawsuit, or a lawsuit is brought and results in a final, conclusive dismissal, or where a counter security bond is furnished by the respondent or the applicant withdraws from the seizure application, the Customs should revoke the seizure.  Furthermore, if the cause of the dismissal of the lawsuit is attributable to the applicant, the applicant would be liable for the cost of the warehousing and stevedore.

If ultimately a court decision is issued and no infringement of the goods seized is found, the damage as a consequence of the seizure will be borne by the applicant. Also, if the parties reach a settlement or where the other party expressly consents, the security bond and/or the counter security bond may be reclaimed and returned.

The relevant authorities are in the process of preparing detailed implementation provisions and these amended provisions of the Act are expected to be fully operational in late March.