The Similarities and Differences of the Border Enforcement Measures Enforces by the Customs of Both Sides of the Straits

Yu-Li Tsai, Patent Attorney

¡½ Bachelor of EE from National Taiwan University

¡½ Master from Telecommunications from National Taiwan University

¡½ IP Master from New Hampshire Law School (Franklin Pierce)

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On the measures of protecting intellectual property rights, the border enforcement measures adopted by the customs can exclude the importation or exportation of cargoes having likelihood of infringing intellectual property rights, and are considerably important part of current awareness for both sides of the straits.  Regarding the border enforcement measures of patent rights, the act of the custom of Taiwan is provisional injunction of suspending the importation or exportation.  However, the amendment bill for Article 94-1 to 94-4 and Article 143 Patent Act examined and passed by Legislative Yuan on January 3, 2014 added a system of the border enforcement measures of ¡§applying for seizure¡¨ for protecting patent rights, which should be a system able to further enhance the protection of patent rights.  The followings will brief the similarities and differences of relevant systems of both sides of the straits on the basis of the new Taiwan Patent Act.

The last patent act amendments added ¡§applying for seizure¡¨ for the patent border enforcement measures enforced by the customs of this country.  According to the newly added Article 97-1 of Patent Act, patentees can apply in advance for seizing an imported article having likelihood of patent infringement; patentee shall apply for the seizure in written, interpret the facts of infringement, and provide deposit or guarantee amount to duty-paid price of the article.  The party seized of the imported article, in contrast, can provide double deposit or comparable guarantee to request the custom to rescind the seizure.  The customs can allow the two parties to inspect the seized article under the premise of not damaging the confidential information protection of the seized article so that the patentee and the party seized of the imported article can evaluate the possibility of infringement.

The customs¡¦ seizure of the imported article according to the patentee¡¦s application is of the nature of provisional right protection, so the parties shall still seek judicial proceedings to find whether the imported article infringes patent right or not.  Therefore, after applying for the seizure, the patentee shall file an infringement action to prevent the article from being retained at the customs overlong and causing unnecessary damages to the importer.  In this regard, when the patentee fails to file an action within 12 days, the action is irrevocably rejected, the seized article is held non-infringement through an irrevocable decision, the applicant voluntarily revokes the seizure, or the party suffering the seizure provides counter guarantee, the customs shall rescind the seizure.  If the reason of rescinding the seizure can be attributed to the applicant, the applicant will bear the burden the expenses generated from the seizure, such as storage charges, handling charges, etc.  In addition, if a patentee considers that an imported article has likelihood of infringement and applies for seizure, but later on, the a court¡¦s irrevocable decision found non-infringement, then the patentee will bear the burden of compensating the party suffering from the seizure the damaged generated from the seizure so as to prevent the patentee from imprudently applying for a seizure proceeding.

In contrast to this country, Mainland China does not provide the patent border enforcement measures in its patent act, but only follows its ¡§Regulations of the Customs Protection of Intellectual Property Rights¡¨ (hereafter ¡§Protection Regulations¡¨).  The applicable scope of the regulation includes the trademark exclusive right, copyright and rights related to the copyright, patent right; in other words, the customs protection measures of intellectual property rights of Mainland China do not differentiate the differences among different rights.  In addition, according to the Protection Regulations, China¡¦s customs adopt protection by application and protection ex officio for the patent border enforcement measures.  The former one means that when a patentee finds that an infringement-suspected cargo is about to be imported or exported, s/he can apply for seizing the infringement-suspected cargo toward the customs, and the customs will enforce the seizure measures.  The later one means that during the monitoring process, the customs find that an importation or exportation cargo is suspected to infringe a patent right which has been recorded in General Administration of Custom, notify the patentee, and enforce the seizure measures against the infringement-suspected cargo in accordance with an application of the patentee.

After the comparisons above, we can find that regarding the patent border enforcement measures, after the amendment bill of the Patent Act of this country is promulgated, this country can establish a system of ¡§seizure by application¡¨, of which the contents is generally comparable to the ¡§protection by application¡¨ provided by the Protection Regulations of Mainland China.  However, in consideration that during the process of custom operations, the staffs of the custom are not professional in judging whether there is a likelihood of patent infringement for an imported article, the amendment of Patent Act of this country does not introduce the scheme of seizure ex officio, which becomes the most apparent difference between the systems of both sides of the straits.

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