Hung Ming Metal Company [complainant] filed a complaint against Sucoot Co., Ltd. [respondent] for violating the Fair Trade Law by sending, in its name and in that of its patent attorney, warning letters alleging patent infringement
Chinese Taipei
Case:
Hung Ming Metal Company [complainant] filed a complaint against Sucoot Co., Ltd. [respondent] for violating the Fair Trade Law by sending, in its name and in that of its patent attorney, warning letters alleging patent infringement
Key words:
infringe patent right, warning letter claiming patent right
Reference:
Fair Trade Commission Decision of 4 May 1998 (the 337th Commission Meeting); Letter (87) Kung Er Tzu No. 8607451
Industry:
Metal Products Manufacturing Industry (2933)
Relevant Laws:
Article 24 of the Fair Trade Law
Summary:
The complainant applied for a new utility model patent for the improvement it made [the complainant's model]. The respondent brought an opposition action citing all of the patents of prior art relating to the subject matter of the complainant's model. The National Bureau of Standards [NBS] dismissed the opposition. The respondent then addressed a warning letter to the complainant and the complainant's trading counterparts alleging patent right infringement. A copy of an infringement assessment report done by the China Mechanical Association [CMA] was attached to the warning letter. The complainant asserted that the respondent's concealing the fact that the objection had been dismissed and requesting a third party examination with regard to the legal remedy process constituted obviously unfair acts which were sufficient to affect the trading order as provided in Article 24 of the Fair Trade Law.
The “Disposition Guidelines For Cases Where Enterprises Issue Warning Letters Against Copyright, Trademark, and Patent Infringement” set forth by this Commission provides that it should be deemed in line with the concept of due exercise of rights pursuant to the Patent Law if an enterprise issues a warning letter after a court at the first instance held that the patent was infringed, or after an impartial and objective institute examines the object in question and issues a report confirming the infringement; or if an enterprise issues a warning letter in which the precise description and scope of the patent and the substantial facts of infringement are clearly stated so that the recipient of the letter is able to make a reasonable judgment thereupon prior to issuance of the letter, a notification has been given to the manufacturer suspected of infringement for.
In determing actual cases whether an institute is an "impartial and objective institutes" as referred to in the aforementioned Guidelines, this Commission in principle is based on the fact whether the institute is appointed by the Judicial Yuan. The CMA, which was commissioned by the respondent, is one of the appointed units. Therefore, in formality, it is in compliance with the procedural requirements set out in the aforementioned Guidelines regarding due exercise of rights when the respondent sent the complainant a warning letter asking for licensing negotiation, based on the CMA's "impartial and objective" report, and notified the complainant's distributor about the patent dispute with the report attached.
Regarding whether the subject in question is the complainant's patent right for reinvention and whether the complainant had to obtain the respondent's prior approval for use of the patent should be resolved by both parties through the substantive procedures relating to patents. It was not within the scope of matters to be determined by this Commission in accordance with the aforementioned disposition guidelines. On the other hand, the respondent already took the action of appeal, re-appeal and administrative litigation against the decision of the NBS. There is no fact indicating that the respondent disregarded the legal remedy process. Moreover, the patent right dispute was pending a final decision because of the appeal and the patent infringement examination did not require that the person requesting an examination discloses information regarding a pending objection to the commissioned institute according to the purpose, nature and function of the patent infringement examination. There should be no fact that could be deemed as concealing the dismissed objection. In conclusion, the respondent's sending of the letter was a due exercise of its rights, and did not violate the provisions of the Fair Trade Law.
Summarized by Yen, T'ing-tung
Supervised by Yu, Su-su
Appendix:
Sucoot Co., Ltd.’s Uniform Invoice No.: 52722605