2017.01.12
Jane Tsai
The Intellectual Property Court rendered the 105-Min-Zhuan-Shang-30 Civil Decision of January 12, 2017 (hereinafter, the “Decision”), holding that a technical evaluation report for utility model patent is not a precondition for bringing an action or exercising patent rights.
According to the facts underlying this Decision, the Appellant asserted that the Appellee’s legal representative was the patentee of the patent-in-suit. The Appellee’s Chief Operating Officer had called a press conference to distribute false information about the allegation that the Appellant infringed the Appellee’s patent-in-suit before a technical evaluation report for utility model patent was obtained pursuant to Article 116 of the Patent Law. Since patent-in-suit was subsequently invalidated for lack of inventive steps, the Appellant claimed damages from the Appellee in accordance with Article 117 of the Patent Law as well as Article 184, Paragraph 1 and Article 195, Paragraph 1 of the Civil Code.
Citing the Interpretation Reasons for Judicial Interpretation No. 507, the revision history and the legislative reasons for the Patent Law and relevant requirements for presenting a technical evaluation report for utility model patent, the Decision held that a technical evaluation report for utility model patent is not a precondition for bringing an action or exercising patent rights. In addition, the acquisition of a technical evaluation report for utility model patent is time-consuming. If such report is indiscriminately required to exempt liabilities for infringing the rights of others as a result of improper exercise of patent rights under dire circumstances, this will obviously and inappropriately undermine the exercise of rights by the rights holder. Therefore, whether the exercise of patent rights by a patentee infringes the rights of others should still depend on the specific manner in which the rights are exercised. Unless the patentee withholds an unfavorable technical evaluation report for utility model patent which has been obtained or unless it is obvious, according to the knowledge of the people with ordinary skills in the art, that there are grounds for invalidating the patent rights, or unless the utility model patent is asserted wantonly without consulting professional opinions, where the patentee is deemed to have deliberately undermined the rights of others through improper assertion of the patent, if the patentee has carried out the duty of caution to confirm that the exercise of the patent rights is justified, it can hardly be concluded directly that the patentee has willfully or negligently engaged in tort simply for failure to present a technical evaluation report for utility model patent.