Border measures for patent infringement

In January 2014, the provision of border measures against patent infringement in Taiwan were added to patent law. Enforcement of the new legislation extends the protective coverage of border controls to patent rights, in addition to the protection provided for trademarks and copyrights. While this, no doubt, empowers the customs authorities to suspend the release of the alleged patent-infringing articles,the customs investigation and determination of patent-infringing goods will rely heavily on the cooperation of right-holders due to the sophistication of the various technologies involved.

To help customs officials carry out their duty, the Implementation Regulations for Customs Authorities to Suspend Goods Infringing on Patent Rights have been finalised in a recent public hearing held by the Taiwan Intellectual Property Office (TIPO). They are summarised below.

Detention procedure and requirements

When requesting the customs authorities to impound articles that are suspected of patent infringement, a patent holder shall submit a written request to the local customs at the port of importation, along with the following requisites:

A certification of the patent right. A utility model patent technical report issued by the TIPO is additionally required for alleged utility model patent infringements.

A certificate of the patent holder’s identification, whether he or she is a natural or juristic person.

"Compensation liability falls on the person who requested the customs detention and he/she must compensate the importer of the detained articles for any damages caused by wrongful detention."

A patent infringement analysis report and evidence identifying the alleged infringing articles, such as product photos, manufacturers’ catalogues, and image files, etc.

A statement for port customs to identify which specific article is to be detained, such as the importer’s name or ID, customs declaration entry number, description of goods, model number or specification of the product, possible date of importation, port of shipment, transportation means, and so forth.

A security of an amount equivalent to the customs duties paid for the imported articles or equivalent guarantee.

Once the detention is enforced, both parties to the customs detention will be informed via written notices from the customs authorities. In addition, both parties to the customs detention are allowed to inspect the detained articles without prejudice to the protection of confidential information.

Revocation of the detention

Although the patent holder may ask customs to temporarily seize the patent-infringing articles, the customs authorities can still withdraw the detention on any of the following grounds:

If the applicant does not initiate infringement litigation within 12 days of requesting the detention;

The infringement litigation is dismissed by a court’s decision; or

If the detention request is revoked by the patent holder.

Other than the above reasons for revocation of the customs detention, the owner of the detained articles can provide a counter-security, double the security for the detention, to ask for the customs detention to be revoked as a defence after the port customs recorded the importation.

Compensation liability

Compensation liability falls on the person who requested the customs detention and he/she must compensate the importer of the detained articles for any damages caused by wrongful detention in the event that non-infringement is confirmed by a court judgment.

In addition, if the reason for the revocation of the detention is attributable to the person who requested the customs detention, the expense of daily storage and any handling service costs must be reimbursed to the owner of the detained articles.

Release of securities

The securities and counter-securities can be released upon request to the customs authorities once the court has issued its final ruling on patent infringement, the applicant and the owner of the detained articles have settled, and consent has been given by the owner of the detained articles.

To summarise, it would be more efficient if right holders prepared well by taking the available border measures into account as a way to stop the distribution of infringing articles in a timely way.

Crystal J. Chen is an attorney at law and partner at Tsai Lee & Chen. She can be contacted at: cjchen@tsailee.com.tw