How to Handle Intellectual Property Warning Letters?
Source: https://www.tipo.gov.tw/en/cp-976-935796-45425-2.html
Rights holders typically send a warning letter to the suspected infringer when there are concerns about violations of patent, trademark, or copyright rights. This procedure is considered a legitimate means to protect their rights. However, to prevent rights holders from abusing this process by excessively sending warning letters to competitors, the Fair Trade Commission has established guidelines regarding the review of cases involving companies that issue warnings for copyright and trademark infringement. Below are some important points to consider when sending warning letters.
Contents
1. Scope of the Guidelines for Warning Letters?
2. Required Preliminary Procedures Before Sending a Warning Letter?
3. Common Errors in Warning Letters?
4. Recommended Procedures Before Sending a Warning Letter?
5. Related Content
1. Scope of the Guidelines for Warning Letters
- Applicable recipients: Your own or your competitors' trading counterparties or potential trading counterparties.
- Formats: Warning letters, notification letters, demand letters, open letters, advertisements, etc.
Warning letters are not limited to documents titled "Warning Letter" or "Demand Letter." They can include open letters published online, advertisements published in newspapers, or even electronic mails. Any written notification to the recipient is considered a warning letter, regardless of its form.
2. Required Preliminary Procedures Before Sending a Warning Letter
- A Court or Impartial Institution has Determined an Infringement
- A court has made a first-instance judgment affirming the infringement of copyright, trademark, or patent rights.
- The Copyright Regulatory and Mediation Board, after mediation, has confirmed copyright infringement.
- Materials suspected of violating patent rights have undergone evaluation by a professional appraisal organization, acquired an appraisal report, and sent a notification prior to or at the same time as a warning letter to the infringing manufacturer, importer, or agent to request an end to the infringement.
- A Court or Impartial Institution has Not Yet Determined an Infringement
- A notification has been sent prior to or at the same time as a warning letter to the potentially infringing manufacturer, importer, or agent requesting the cessation of infringement. If procedures for rights and remedies have been initiated, it consti-tutes a form of prior notification.
- The warning letter clearly states the contents and scope of the copyright, trademark, or patent rights, as well as the specific facts of the infringement (e.g., the time or location the infringement took place, or how the infringing product was manufactured, used, sold, or imported) in order to ensure the recipient has a clear understanding of the facts of the potential infringements to the rights in dispute.
3. Common Errors in Warning Letters
- Not conducting any preliminary procedures
- Letter does not specify contents of rights or facts of infringement
- Warning letter sent despite knowing there is no infringement
- Sending warning letter to any third party despite not having completed rights transfer with the patent authority
＊ Legal Liabilities for Abusing Warning Letters
Failure to abide by the Guidelines for Warning Letters and sending warning letters in violation of Article 25 of the Fair Trade Act will result in the Fair Trade Commission levying a penalty of NT$50 thousand to NT$2.5 million, depending on the severity of the facts of the case. Those who continue to send such letters or do not take necessary corrective measures may be subject to penalties of NT$100 thousand to NT$50 million for each subsequent violation.
4. Recommended Procedures Before Sending a Warning Letter
- Obtain a determination or appraisal report that proves infringement from a court or impartial institution.
- Notify your competitors before sending a warning letter to ensure your competitors know the scope of the infringement.
- Warning letters must clearly describe the contents, scope, and facts of the infringement of the copyright, trademark, or patent rights.
＊ Key Points for Warning Letters for Utility Model Patents:
According to the Patent Act, utility model patents undergo formality examinations, in which the competent authorities will grant patent rights without undertaking substantive examinations. This means that such patent rights may not necessarily be effective even if the rights holder obtains a utility model patent.
Consequently, warning letters for utility model patents must include a Technical Evaluation Report of Utility Model Patent in the Patent Infringement Assessment Report.
5. Related Content
(1) What Do I Do When I Receive a Certified Warning Letter for a Patent Infringement?
Upon receipt of a warning letter (e.g., warning letter, attorney's letter, etc.), first review the contents of the letter to see if there is any evidence of infringement of the patent, such as a court judgment or a report from an impartial and objective testing organization, or if the content, scope, and specific facts of infringement have been stated, or if they have not been stated, it is possible that the other party has violated the Fair Trade Act. In addition, you may go to the patent information retrieval system of the Taiwan Intellectual Property Office to inquire about patent information and retrieve relevant evidence as preparation for filing an accusation or patent infringement lawsuit; you may also inquire about and refer to the relevant provisions of the Taiwan Intellectual Property Office's official website on patent infringement determination to determine whether there is a possibility of infringement; and in consideration of the complexity of the patent infringement lawsuits that may occur in the future, in order to safeguard your own rights and interests, you may consider hiring a professional attorney or consulting with an expert in the field. In order to protect one's rights and interests, one may consider appointing a professional patent attorney firm to handle the case.
(2) Guidelines Principles for Warning Letters
Fair Trade Commission Disposal Directions (Guidelines) on the Reviewing of Cases Involving Enterprises Issuing Warning Letters for Infringement on Copyright, Trademark, and Patent Rights (Updated at：2024-11-04) :
A. (Purpose)
The Fair Trade Commission (hereinafter "the Commission") adopts the Guideline in order to ensure fair competition among enterprises, to maintain trading order, and to effectively handle the abusive uses of copyright, trademark, or patent rights and thus constituting restraint on competition or unfair competition, through inappropriate issuance of warning letters to other persons alleging that the competitors have infringed copyright, trademark, or patent rights.
B. (Definitions)
The "act of an enterprise issuing a warning letter" in these Guidelines refers to an enterprise taking one of the following measures to inform its own or another enterprise's trading counterparts or potential trading counterparts that another enterprise infringes its copyrights, trademarks or patents:
(1) A warning letter;
(2) A notification;
(3) An attorney's letter;
(4) An open letter ;
(5) A public notice;
(6) Other written or electronic documents to inform its own or another enterprise's trading counterparts or potential trading counterparts.
C. (Acts Constituting a Proper Exercise of Rights Pursuant to the Copyright Law, Trademark Law, and Patent Law … 1)
Issuance of a warning letter by an enterprise after taking one of the following procedures is a legitimate practice according to the Copyright Act, Trademark Act or Patent Act:
(1) Acquiring the decision of a court of first instance confirming copyright, trademark or patent infringement;
(2) Achieving mediation through a copyright review and mediation committee and copyright infringement confirmed by a court;
(3) Having the proof of patent infringement evaluated by a professional institution and at the same time obtaining the technical evaluation report while it is utility model patent; and also notifying the manufacturers, importers or agents involved in the infringement to cease the infringement before or when issuing the warning letter.
An enterprise failing to issue the infringement cessation notification stated in Subparagraph 3 of the preceding paragraph but having taken the right to a remedy procedure, done its best to fulfill the duty of care, or informed parties confirmed as physically impossible or to be notified of the enterprise’s awareness of the infringement is considered having taken the procedure to issue the infringement cessation notification.
D. (Acts Constituting a Proper Exercise of Rights Pursuant to the Copyright Law, Trademark Law, and Patent Law … 2)
For an enterprises that has only issued warning letters after carried out the following procedures shall be considered as properly exercising its rights pursuant to the Copyright Act, Trademark Act, or Patent Act:
(1) Notify the allegedly infringing manufacturer, importer, or agent to request cease of infringement beforehand or simultaneously with the issuance of warning letter;
(2) State clearly the precise content and scope of copyright, trademark or patent rights, and the concrete facts of infringement in the warning letter (for example, the time and place for the rights at issue, the production process, uses, sale or import), so that the receivers of letters have sufficient knowledge that the rights at issue are possibly being infringed;
(3) When a utility model patent is involved, the utility model technical evaluation report shall be presented before issuance of the abovementioned notification or warning letter.
An enterprise that fails to give notification and request cease of infringement as stipulated in Subparagraph 1 of the preceding paragraph may nevertheless be considered as have already carried out the procedure of making cease of infringement notification if the enterprise has taken procedures of legal remedy beforehand, or exercised all reasonably possible due diligence on the notification or if such notification were objectively impossible, or there are concrete evidences to prove that the party being notified has already known about the infringement controversy.
E. (Penalty)
The act of issuing a warning letter by an enterprise without adopting the preliminary procedures set forth in the provisions of Articles 3 and 4 shall be deemed a violation of the Article 25 of the Fair Trade Act if such an act is deceptive or obviously unfair and sufficient to affect trading order.
Though the issuing enterprise has adopted the preliminary procedures set forth in the provisions of Article 3or 4, if the content of a warning letter involving in incidents of competition restraint or unfair competition conducts, the act of issuing a warning letter will be examined on a case-by-case basis for any violation of the Fair Trade Act.
F. (Guidelines also apply to inappropriate issuance of warning letters concerning infringement by enterprises at different stages of production/sales)
If an enterprise inappropriately issues a warning letter indicating that copyright, trademark, or patent had been infringed by a non-competing enterprise, i.e. enterprise not at the same stage of production/sale as the issuing enterprise, and thus has resulted in competition restraint or unfair competition, these Guidelines shall also apply.