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The Legal Effect of Disclaimer Statements |
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Factual Backgrounds:
Luzo Company (a fictitious name), which is active in developments of chemicals for industrial use, sets up technical data sheets attached to its products and packages. The data sheets, stated that the products as well as their uses are protected by patents owned by Luzo Company and no license under the patents of Luzo Company is granted or implied by the sale of these products. They also warned that nothing contained in the data sheets may be construed as a recommendation or a waiver for use of these products in conflict with the claims of the Luzo patents.
Question: What is The requirement of patent marking under the Taiwan Patent Law
Article 79 of Taiwan Patent Law provides:
“An invention patentee shall mark the serial number the patent certificate on his/her patented article or the packaging, and may require that his/her licensee or the grantee of a compulsory licensee do the same. In case of failure to affix such marking, no claim for damages shall be allowed, except in the case that the infringer has known, or should have known as proved by facts, the existence of the patent.”
The required patent marking shall be sufficient for the public to locate information about the patent at issue. It usually consists of the issuing country and the type and number of the patent. If the patentee fails to comply with the patent marking requirement and no awareness of the patent on the part of the infringer is shown, the patentee’s claim of damage is lost. Other legal remedies such as an injunction are not affected.
Can a technical data sheet serve as a valid patent marking?
If the technical data sheet is closely attached to the patented product and consists of relevant information about the patent, it may be deemed to a valid patent marking under Article 79 of the Patent Law. Otherwise, whether it may be relied upon by the patentee to defeat an allegation of innocence by the infringer must be determined by the court on a case-by-case basis.
Is patent marking in the technical data sheet sufficient to establish a claim of willful infringement?
A willful infringement occurs when the infringer acts under an exact belief that his/her act of manufacturing or selling is infringing the patent. A mere awareness on the part of the infringer that the product of a third party is protected by patents is not sufficient to establish a claim of willful infringement for which enhanced damages may be imposed on the infringer. The standard of evidence is higher in that respect, and different courts may vary in their attitude toward this issue.
Is including a disclaimer of patent license in the technical data sheet appropriate?
The principle of mere sales of patented article not inferring a license of the patent is well-recognized in this country. Therefore, we believe that a disclaimer of patent license in the proposed technical data sheet, though not strictly necessary, is suitable under the law.
Can the patentee restrict the use of the product sold or require an additional license fee payable by the buyer for special use?
This is a dubious question for which different answers may be given by legal professionals. In our opinion, according to the theory of exhaustion of patent right, once the patented article has been sold in due course of trade, the patentee loses control of the article and he/she cannot claim a patent right against an act of use, selling, transfer or lease of the patented article by the purchaser. If the patentee requires additional payment by the purchaser for the value of his/her patent, such payment should be included in the price of the patented article from the beginning.
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