In Taiwan, the current Patent Act does not include the concept of "indirect infringement" as found in many foreign jurisdictions. Instead, claims of indirect patent infringement are typically based on the doctrine of joint tort liability under Paragraph 1, Article 185 of the Civil Code or liability for inducement ("instigation") and contributory infringement under Paragraph 2, Article 185 of the Civil Code. Such provisions enable claims for joint and several liability for damages against both direct infringers and parties involved in indirect infringement.

 

In cases of "infringement by inducement or contributory infringement," the courts often consider the existence of a direct tortfeasor to be a prerequisite for holding an instigator or accomplice of patent infringement liable under Paragraph 2, Article 185 of the Civil Code. This position has been supported in previous judgments of the Intellectual Property and Commercial Court ("IP Court"), such as the Civil Judgment No. 99-Min-Chuan-Su-Tzu-59 and No. 100-Min-Chuan-Su-Tzu-69. Notably, in a recent judgment, Civil Judgment No. 112-Min-Chuan-Shang-Tzu-2, issued on June 13, 2024, the IP Court further clarified that a product accused of indirect infringement is not considered infringing if it qualifies as a "staple article" or a "commodity of commerce suitable for substantial noninfringing use."

 

In the 2024 judgment, the plaintiff alleged that the defendant’s production and sale of certain video system products (the "Disputed Video System") and related accessories (collectively, the "Disputed Products") jointly infringed the plaintiff’s patent related to a vehicle-side auxiliary image system (the "Disputed Patent") with consumers (i.e., end users) who purchased the Disputed Products. The plaintiff sought damages and an injunction against the defendant. After examining the technical aspects of the Disputed Products, the court concluded that the Disputed Video System did not fall within the scope of the claims of the Disputed Patent, and thus the production and sale of the Disputed Products did not constitute patent infringement. Although the plaintiff further argued that the Disputed Products, when used in conjunction by consumers, fell within the scope of the Disputed Patent, the IP Court found that the Disputed Products were not exclusively designed for automotive use, that the accessories were consumer-selected, and that the operation manual did not restrict the product to vehicle recording purposes. Therefore, the Disputed Video System should be considered a "staple article" or "commodity not solely suitable for infringing the disputed patent." Moreover, based on the product information as disclosed on the defendant's official website and in the manual of the Disputed Products, the defendant did not sell the related accessories as a set with the Disputed Video System, nor did they provide any instructions for integrating the system into vehicles. There were also no regulatory or safety standards requiring specific configurations. As a result, the court determined that the Disputed Products are "staple articles" and not commodities solely suitable for substantial infringing use, concluding that the consumer's actions in setting up the Disputed Products were unrelated to the defendant, and therefore the defendant's actions did not constitute inducement or contributory infringement under Paragraph 2, Article 185 of the Civil Code.

 

The IP Court’s reasoning seems to align closely with Subparagraph (c), Paragraph 271 of the United States Patent Act, which limits liability for indirect infringement to cases involving components that are material to the patented invention but excludes "staple articles" and "commodities with substantial noninfringing uses." This principle has also appeared in an earlier IP Court case, namely Civil Judgment No. 103-Min-Chuan-Su-Tzu-66 rendered on December 18, 2015. In such case, the IP Court found a probe head to be infringing because it represented a core technical feature of the patent and lacked substantial noninfringing uses. The recent ruling reinforces the importance of determining whether a product constitutes a "staple article" or a "commodity of commerce suitable for substantial noninfringing use" in assessing liability for indirect infringement. It is worth observing to see how this criterion continues to influence future rulings by the IP Court.