A Comparative Study on Patent Infringement Types andCourt Judgements in United States, Japan, and Taiwan (*)
Invited Researcher: KAO, Chien-Chung (**)
A person directly infringes a patent by making, using, offering to sell, selling, or importing
any patented invention, without authority, during the term of the patent. Judging whether directly
infringing or not usually depends on “all elements rule” or “doctrine or equivalence”. Unlike
direct infringement, in the case where one or few elements are absent in an allegedly infringing
device, however, the device increases the possibility of the infringement which could lead toindirect infringement. The United States and Japan have addressed indirect infringement for
decades, including different requirements further codified in their respective statute laws. On thecontrary, there is a lack of clear statutory language addressing indirect infringement in Taiwan
patent law. This research will compare and analyze the differences between Japan, United States
and Taiwan’s court judgments and patent laws about direct and indirect patent infringements,
especially focusing on the relationships between direct and indirect patent infringements,
defendant’s subjective requirements, infringement types, infringement objects, exclusions ofinfringement objects, etc. The necessity of adopting indirect infringement into Taiwan Patent Act
and the advices will also be covered in this research.

I. Introduction
If the accused infringing product or process lacks one of the technical features of the patentor one technical feature is not the same and not equivalent, then it does not constitute patent
infringement 1. Unlike direct infringement, in the case where one or few elements are absent in an
allegedly infringing product, however, the product highly increases the possibility of theinfringement which could lead to the so-called indirect infringement. The United States, Germany,
S. Korea and Japan all have addressed indirect infringement, including different requirements
further codified in their respective patent law. On the contrary, there is a lack of clear statutory
language addressing indirect infringement in Taiwan patent act. In 2008, Taiwan Intellectual
Property Office (TIPO) proposed and drafted an article adopting indirect infringement into Taiwan
patent act. But through many public hearings, many Taiwanese users worried that it could lead topatentee’s patent right and lawsuits abuses and caused serious damages to the local Taiwanese
Original Equipment Manufacturer (OEM) companies. Since Taiwan just established its Intellectual
Property Court in 2008, there was no previous court judgment about patent indirect infringement(*) This is a summary of the report published under the 2017 Industrial Property Research Promotion Project entrusted by the Japan
Patent Office.
(**) Patent Examiner, Taiwan Intellectual Property Office, at our institute over a period of approximately 7 months from July 4,2017 through February 3, 2018, as an Invited Researcher for the Fiscal Year 2017.
1 Taiwan Intellectual Property Office, “The point for patent infringement judgment”, pp. 29-51, Feb, 2016.

iand the oppose from different sectors that led to no consensus about this issue, TIPO decided todelete patent indirect infringement from the draft in 2009.
But patent infringement cases are rarely alleged and decided by paragraph 1 (joint
infringement) and paragraph 2 (induced and contributory infringement), article 185, Taiwan Civil
Code 2 in Taiwan court proceedings. Because the premise for joint, induced and contributory
infringement in article 185 is direct infringement. Besides article 185, Taiwan Civil Code can only
claim for compensation of the injury. The patentee doesn’t have the right to claim as in the event ofpatent right infringement set in Article 96, Taiwan patent act 3, such as demand a person who
infringes or is likely to infringe the patent right to stop or prevent such infringement, request for
destruction of the infringing articles or the materials or implements used in the infringing act, or
request for other necessary disposal.
Based on different economic growths and social needs, Japan, United States, S. Korea andEuropean countries do not adopt the same criterion for the legislation of indirect patent
infringement. It’s necessary to study and research the patent indirect infringement systems and theircourt judgements in United States, Japan to construct the complete concepts of patent indirect
infringement behaviors. And examine whether Taiwan Civil Code or Taiwan patent act can provide
complete and necessary protection for patentee or need any amendment of Taiwan patent act under
the situation of patent indirect infringement.

II. The Patent Infringement Types and Court Judgements in United States
Under section 271(a) of the U.S. Patent Code, direct infringement occurs when a party makes,
uses, sells, offer for sale or imports a patented invention. The importation, use, sale or offer for saleof a non-patented product in the US is also an act of infringement, if the non-patented product wasmade outside the US by a process patented in the United States. The types of direct infringements canbe literal infringement or infringement under the Doctrine of Equivalence. Direct infringement
requires no level of intent. The theory of direct infringement becomes more and more complicatedwhen the accused system or method is the result of components supplied by or steps performed by

2

Article 185, Taiwan Civil Code: “If several persons have wrongfully damaged the rights of another jointly, they are jointly liable
for the injury arising therefrom. The same rule shall be applied even if which one has actually caused the injury cannot be sure. Instigators
and accomplices are deemed to be joint tortfeasors.”
3 Article 96, Taiwan Patent Act:” Right to claim in the event of patent right infringement
A patentee of an invention patent may demand a person who infringes or is likely to infringe the patent right to stop or prevent
such infringement.
In case an infringement of invention patent occurs due to intentional act or negligence, the patentee may claim for damages
suffered therefrom.
When making a demand pursuant to Paragraph 1, the patentee may request for destruction of the infringing articles or thematerials or implements used in the infringing act, or request for other necessary disposal.

iimultiple entities. The law of “divided infringement”, also called “joint infringement”, is at issue when
multiple parties are involved in infringement. The Federal Circuit also outlined a relationshiprequirement for divided infringement in the Akamai V case 4. Actors in a joint enterprise can all beheld liable “for the steps performed by the other as if each is a single actor” and thus can be liable asdirect infringers. A joint enterprise exists where all the following requirements are met: (1) anagreement, express or implied, among the members of the group; (2) a common purpose to be carriedout by the group; (3) a community of pecuniary interest in that purpose, among the members; and (4)an equal right to a voice in the direction of the enterprise, which gives an equal right of control.
A defendant may be held liable for infringement though it did not directly engage in infringing
activities itself. The two types of indirect infringement are contributory infringement under section
271(c) and inducement infringement under section 271(b). To be liable for inducement under section
271(b), the defendant must actively and knowingly aid and abet another’s direct infringement. The
conduct being induced by the defendant must constitute direct infringement. The Supreme Court
made clear in the Global-Tech Appliances, Inc. v. SEB S.A., case 5 that the knowledge requirement
to section 271(b) did not require actual knowledge on the part of the inducer. It is enough to showthat the defendant was willfully blind to the possibility that the induced acts constituted patent
infringement. The Supreme Court stated the standard of willful blindness requires “(1) the defendantmust subjectively believe that there is a high probability that a fact exists and (2) the defendant musttake deliberate actions to avoid learning of that fact.” Evidence of good faith, such as an attorney’s
no-infringement opinion, can negate liability for inducement.
Section 271(c) creates liability for those who have contributed to the infringement of a patentby supplying a key component of a patented device. A claim of contributory infringement requires
the existence of direct infringement. The Federal Circuit has essentially broken the statute down
into four elements. In order to establish contributory infringement, the court has held that a patent
owner must show: (1) that there is direct infringement, (2) that the accused infringer knew that the
combination for which its components were being made was both patented and infringing, (3) thatthe component has no substantial noninfringing uses, and (4) that the component is a material partof the invention 6. Only the sale of an article capable of both an infringing use and other lawful uses
is not sufficient for a finding of contributory infringement.
Section 271(d) exempts certain activities by a patent owner from the misuse doctrine. Section
271(f) broaden US patent protection and prohibit shipping patented devices in smaller components
4

Akamai Techs., Inc. v. Limelight Networks, Inc., 134 S. Ct. 2111,2117 (2014)
Global-Tech Appliances, Inc. v. SEB S.A.,131 S.Ct. 2060 (2011)
6 Fujitsu, 620 F.3d at 1326 and 1330. The second element was essentially reaffirmed by the Supreme Court in Global-Tech, whichstated that §271(c) requires knowledge of the existence of the patent and knowledge that the component infringes. Global-Tech,
131 S. Ct. at 2069.
5

iii

for assembly overseas. But they are beyond the scope of this research report.

III. The Patent Infringement Types and Court Judgements in Japan
1. Direct Infringements: Literal and Equivalent Infringements
The general principle is that patent infringement is recognized only if an allegedly infringing
product meets all of the structural elements stated in the claims. It’s also being understood that for
the interpretation of the claim language, the description and drawings may be taken into account.
This is known as literal infringement. Literal infringement cannot be affirmed where not allelements of the claim are embodied in the accused device.
On February 24, 1998, in the “Ball Spline Bearing case” 7, the Supreme Court has provided aguideline in favor of the doctrine of equivalents. Then the products should be regarded as identicalwith the construction as indicated in the scope of the patent claim and fall within the scope of thetechnical scope of the patented invention if meets the requirement of the guideline.
2. Indirect Infringements
Certain acts, which do not directly constitute infringement, are deemed to constituteinfringement, as preliminary acts or contributory acts with a high likelihood of infringement. They
are stipulated in Patent Act, Article 101 8
The provisions on indirect infringement are designed to set up a system for practicallysecuring the actual effects of a patent right, but on the other hand, they must be carefully employedso as not to expand the scope of a patent right unjustly. There is contributory indirect infringement
only in Japan. Article 101, subparagraph 1 and 4 are for exclusive product indirect infringement
and article 101, subparagraph 2 and 5 are for non-exclusive product indirect infringement.
3. Major Court Judgments“Hammer for Sand Making Machine” case, “Bread Machine Patent” case,aIchitaro andHanako” case,“Single-Lens Reflex Camera” case and “Clips for Printed Circuit Board Jigs” caseare explained at this chapter.

IV. The Patent Infringement Types and Court Judgements in Taiwan
78Japan Supreme Court, 1994 (O) 1083, 24 February 1998.
Japan Patent Act, Article 101.

iv

1. Types of Infringements
Only the person who directly commits these actions will be held to have infringed the patent
under Taiwan Patent Act. In Taiwan legal system, there is no concept similar to the “indirect
infringement” or “contributory infringement” that exists in U.S., Japan, and other European
countries. Taiwan Patent Act provides no provision on indirect infringement currently.
The types of patent infringements in Taiwan and their respective stipulated laws are as
following table.
Types of patent infringement
Direct Infringement
Joint Infringement
Inducement Infringement
Contributory Infringement

Law
Article 96, Taiwan Patent Act
The first paragraph, Article 185, Taiwan Civil CodeThe second paragraph, Article 185, Taiwan Civil CodeThe second paragraph, Article 185, Taiwan Civil Code(1) Direct Infringement: Literal Infringement
Literal infringement occurs where all elements of a claim are represented in the product or
method in dispute by the direct conduct of the accused infringer.
(2) Direct Infringement: Infringement under the Doctrine of Equivalents (DOE)
Under DOE, infringement occurs if an element, composition, step, or combination thereof in
the patent claim is altered or replaced but such alternation or replacement does not bring forth
substantial difference in the perspective of one of ordinary skill in the art. However, if an elementof the patent claim is completely missing in the accused product or process, rather than altered or
replaced by another similar element, then DOE does not apply 9(All-elements Rule).
The “triple identity test” or “tripartite test” or “way-function-result test” and “insubstantial
difference test” is adopted to test whether the corresponding technical features of accused
infringing product or process and the plaintiff’s patented claim are equivalent or not.
(3) Joint Infringement
Joint infringers are jointly and severally liable for damages under the general tort law of
Taiwan Civil Code. A patent owner can only rely on the theory of “joint torts” under the Civil Codeshould one wish to claim liabilities against an indirect infringer, such as inducing infringer orcontributory infringer.
(4) Instigation and help Infringement: deemed to be joint infringement
9

The newest “Directions for Determining Patent Infringement” published in Feb. 2016, TIPO.

v

As long as a patent owner can prove that (1).a direct infringer and direct infringing conduct
exist, and (2).the instigation (inducement) or help (contribution) by the indirect infringer must be“intentional” or merely done out of “negligence”, and that (3).there is a causal link between theindirect infringer’s ‘induction” or “contribution” and the result of the infringement, the accused
direct and indirect infringers would be held responsible for joint infringement.
2. Some Court Judgments“Takeda” Case, “Drain Bag” Case, “MPS” case and “Apparatus for Web Page Event
Recording and Playing” Case are mentioned at this chapter.

V. The Comparison of Patent Infringement Types and Case Laws in UnitedStates, Japan and Taiwan
1. Direct Infringements
For direct infringement, United States, Japan and Taiwan have basically the same criterion
which is “all-element rule” for literal infringement.
United States in determining equivalence is according to “[a]n analysis of the role played byeach element in the context of the specific patent claim will thus inform the inquiry as to whether asubstitute element matches the function, way, and result of the claimed element, or whether thesubstitute plays a role substantially different from the claimed element.” 10 In Japan, the Supreme
Court has provided a guideline for the doctrine of equivalents 11. If the 5 requirements of DOE are
met, then the products should be regarded as identical with the construction as indicated in thescope of the patent claim and fall within the scope of the technical scope of the patented invention.
In Taiwan, “way-function-result test” and “insubstantial change” are suggested in the “Directions
for Determining Patent Infringement” published by TIPO’s to test the DOE.
U.S. Courts have also interpreted Section 271(a) to address about the doctrine of divided
infringement, where a relationship status between two or more parties can lead to a finding ofdivided infringement. The Federal Circuit also outlined a relationship requirement for divided
infringement. Actors in a “joint enterprise” 12 can all be held liable “for the steps performed by theother as if each is a single actor 13 and a direct infringer.
2. Indirect Infringements
10

Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 117 S. Ct. 1040, 41 USPQ2d 1865, 1875 (1997)
Japan Supreme Court, 1994 (O) 1083 ,24 February 1998
12 Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d at 1022 (2015)
13 Id.
11vi

The comparisons of indirect infringements including types of indirect infringements, types of
behaviors, infringement objects, exclusions of infringement objects, subjective requirements andrelationship with direct infringement in U.S. and Japan are listed as following table.
country

UnitedStatesJapan

Types ofindirect
infringements

Objective requirements
Types of
Infringement
infringement
objects
behaviors

Exclusions ofinfringement
objects

Inducement
Actively
infringement
induces
Under 35 U.S.C. infringement
271 (b)No
requirement

No
requirement

Contributoryoffer to sell,
infringement
sells within the
Under 35 U.S.C. United States or
271 (c)imports into theUnited States

a component or amaterial orapparatus
constituting amaterial part ofthe invention

a staple article
or commodity
suitable for
substantial
noninfringing
use

Contributory
infringement
under Patent
Act Article 101,
Subpar. 1 and 4(for exclusive
product)

any product to be No
used exclusively requirement
for the producingof the patented
product or any
product to be
used exclusively
for the use of thepatented process”(Exclusive
product)
Indispensable
widelyobject for the
distributed
resolution of the within Japanproblem by theinvention(Non-exclusive
product)

Contributory
infringement
under Patent
Act Article 101,
Subpar. 2 and 5(fornon-exclusive
product)

acts ofproducing,assigning,
importing oroffering for
assignment as abusinessvii

Subjective
requirements

Relationship withdirectinfringement
Depends on
directinfringement

1. knew thepatent2. knowledge( or willful
blindness) thatthe induced acts
constitute patent
infringement
1. knew thepatent2. knew the useof thecomponent
would infringe
the patent
No requirement Eclectic
Theory :Whether
independenc
e theory or
dependence
theory beappliedshould beanalyzedcase-by-case
1. knew thearticle (orproduct) is
utilized for theworking of theinvention
2. knew theinvention ispatented

The types of infringements, types of behaviors, objective requirements and subjective
requirements in Taiwan’s “joint torts” under the Civil Code are listed as following table.
TaiwanTypes ofinfringements“joint torts”
under Taiwan
Civil Code

Joint
infringement
under Civil
Code, Article
185, Para. 1

Types ofinfringement
behaviors
the behaviors
must havecausalrelationshipwith thedamagescaused by thetort acts

Objective
requirements

Subjective
requirements

several persons intension or
have
negligencewrongfully
damaged therights ofanother jointly
to assist others
to commit torts

Relationshipwith direct
infringement
Depends on
directinfringement

Contributory
infringement
under Civil
Code, Article
185, Para. 2
Inducement
to encourage or
infringement
incite others tounder Civil
commit torts
Code, Article
185, Para. 2
The instigation (inducement) or help (contribution) by the joint infringer could be“intentional” or merely done out of “negligence” through the Taiwan court judgments.

VI. The Influence of Adopting Indirect Infringement into Taiwan Patent Act
In the existing Taiwan legal system, there is no concept similar to “indirect infringement” or“contributory infringement” found in foreign patent laws like U.S. or Japan or European countries.
A patent owner can only rely on the joint torts of the Civil Code if an attempt to claim liability ismade against an indirect infringer, such as an inducing infringer or a contributory infringer.
In 2008, Taiwan Intellectual Property Office (TIPO) proposed and drafted an article adopting
indirect infringement into Taiwan patent act. The final version of the drafting in 2009 was: “On thepremise that clearly knowing a product is used as the main technical means of the patented
invention to solve the problem, offering for sale or selling this product to any person who infringes
upon such patent right shall be deemed as the patent infringement, and the product can be got in thegeneral trading is excluded.”
However, through public hearings, people worried about this draft of provision mostly
represented an ambiguous legal concept such as “main technical means” which the coverage isdifficult to be defined and may cause trouble on the judicial judgment and patents practice. Alsoviii

considered the domestic industry development, social and economic needs, TIPO decided to delete
patent indirect infringement from the draft in 2009.
1. The Problems and Disadvantages of Using Civil Code for the Patent Indirect Infringement(1) The indirect infringement must depend on the direct infringement(2) The right to stop infringement and the right to prevent infringement(3) The indirect infringement objective requirement(4) The indirect infringement subjective requirement(5) Responsible liability
2. The Necessity of Adopting Patent Indirect Infringement(1) Not Enough Protection under Civil Code(2) Indirect Infringement Not Necessary Damages the Local Original Equipment Manufacturing(OEM) Industry
3. Advices for Adopting Patent Indirect Infringement
The advice for adopting patent indirect infringement into Taiwan Patent Act will be as
following table.
country

Advicesfor
Taiwan’s
futureindirect
infringement

Type of indirect Objective requirements
infringements
Types of
Infringement
infringement
objects
behaviors
Contributory
infringement

offer to sell or
sellContributory
infringement

offer to sell orsell

any product to be
used exclusively
for the producingof the patented
product(exclusive
product )Indispensable
object for the
resolution of the
problem by theinvention(Non-exclusive
product)ix

Exclusions ofinfringement
objects
No exclusiona staple article
or commodity
suitable for
substantial
noninfringing
use

Subjective
requirements

Relationship withdirectinfringement
No requirement Depends on
directinfringement

1. knew thearticle (orproduct) is
utilized for theworking of theinvention
2. knew theinvention ispatented

Depends on
directinfringement

VII. Conclusion
The theory of “joint torts” under the Civil Code is the only way for patent owner wish to
claim liability against an indirect infringer, such as an inducing infringer or a contributory
infringer.
However, patent indirect infringement under Civil Code has problems and disadvantages
such as the patent holder can claim for compensation only after the direct infringement happened,patent holder cannot claim the right to stop or prevent infringement, a product which can be easilyacquired by ordinary trading could be the infringement object, the subjective requirement is not
limited to intentional behavior, the joint infringers share the damage compensations, etc. Because
there is not enough protection for the patent holder under Civil Code and indirect infringement
system not necessary damages the local OEM industry, it is advised that Taiwan should adopt
indirect infringement into the Patent Act.
The advices for adopting patent indirect infringement into Taiwan Patent Act are as
following. The patent indirect infringement should depend on direct infringement in order not to
expand the scope of protection and thus makes a balance between the private patent right and the
public interest. Type of Indirect Infringement will be contributory infringement only. The types ofindirect infringement behaviors will be limited only for “offer to sell or sell” The infringement
objects should be only for products and should not include method or process. The infringement
objects could be either “any product to be used exclusively for the producing of the patented
product” or “indispensable object for the resolution of the problem by the invention”. The
subjective requirement will be no requirement for exclusive product infringement. Knew the article(or product) is utilized for the working of the invention and knew the invention is patented will be
the subjective requirement for non-exclusive product infringement.

x