Article 185 of the Taiwanese Civil Code regulates that ” if several persons have caused an injury to the right of another person by a wrongful act committed jointly, they are jointly and severally liable for the damage. The same rule applies if it cannot be ascertained which of several participants has caused the damage. Instigators and accomplices are deemed to be joint tortfeasors.”
According to the cited article of law, a person whose act is held as constituting inducement of infringement or contributory infringement under the U.S. Patent Act may be likely held responsible for patent infringement under the Taiwan Patent Law by the concept of joint tortfeasors. In determining if a person by the act of instigation or participation has jointly committed a patent infringement with other persons, the court will look into the intention of the parties concerned and the acts respectively performed by those multiple wrongdoers.
In the above furnished factual pattern, a determination of whether Party B’s conduct in supplying the material to its customer in Taiwan (Party C) has constituted joint infringement of Party A’s patent is hinged upon the mental state of Party B as reasonably inferred from the surrounding situations, and Party A (the patentee) shall carry the burden of proving such state. The simple act by Party B in shipping the general material to Taiwan is not infringing in itself, even though Party B realizes that there is a possibility of infringing application of the material by Party C. However, if Party C through its agent has revealed its intention to apply the material to the patented usage, or if Party B has previously received a warning letter from Party B about the infringing use of the material by Party C, an intention to assist is likely to be found against Party B and its acts in supplying the material to Party C in disregard of such knowledge may constitute the basis of the liability of joint infringement of patent. On the other hand, if Party B has obtained from Party C an undertaking not to apply the material to infringing usage, or if Party C has executed an indemnification agreement in favor of Party B against the liability of patent infringement, then the likelihood of a finding of the critical intention will fall significantly.
Once Party B and Party C are held as jointly infringing, they are jointly and severally liable for the damages caused thereby. The creditor (Party A in this hypothetical case) is entitled to demand total or partial performance from anyone of the debtors (Party B and Party C), or from several or all of them, simultaneously or successively, and all the debtors remain jointly bound to the creditor until the obligation has been fully performed. (§ 273 of the Taiwanese Civil Code)
Therefore, in pursuing the liability of Party B and Party C for joint infringement of patent, it is not necessary for Party A to sue both parties in one lawsuit and it has the option to sue them jointly or separately. However, once both infringers have been sued in the same action, the merit of the lawsuit must be adjudicated consistently as between the 2 infringers without any discrepancy. Furthermore, if Party A just sues Party B, the effect of the judgment (res judicata) that is favorable to Party B will extend to Party C, (§ 275 of the Taiwanese Civil Code) and the latter also has the right to request to join the lawsuit at a suitable time during the trial.
Perkin Liaw has an LL.B. degree and an LL.M. degree in IP Law. He acted as the Chief of Trademark Group at this firm for a number of years before he took the current position of he Manager of the International Services. His specialty is in the fields of trademark law, international IP litigation, technology licensing, corporate/commercial law and other international agreements.
