Re-Appraisal of Adequate Regulation on Intellectual Property Demand Letters: Perspective from the Application of the Fair Trade Act and U.S. Anti-Patent Troll Legislations

Abstract

公平會對於濫發智財權侵權警告函行為之規範，自從 1997 年訂定處理原則以來即要求發函前必須踐行三種先行程序其中之一，否則即有違反公平法之可能。此一見解持續受到國內司法實務的支持，然而學界一直有反對聲浪，認為先行程序管制不符合警告函作為妨害排除或防止請求權行使行為之性質，其判斷有過於形式化之嫌，並且無法達到證明權利基礎或使受信者合理判斷之原本設定目標。從美國近來各州對於專利主張實體之防治立法經驗，以及我國以往案例也顯示，僅就警告函加以管制，很容易遭到權利人透過發動民刑事法律程序而加以規避。本文建議改由實體管制途徑出發，針對不同類型的警告函採取三種不同的管制方式，並且將訴訟程序中法院對於內容不明確警告函權利行使效力之調控，納為管制方案的一環，方能解決濫發警告函此一困擾國內已久的公平法議題。

Ever since 1997 when the Fair Trade Commission (FTC) enacted the intellectual property infringement demand letter guidelines, the FTC has consistently required the issuers of those letters to follow one of the three pre-issuance procedures, otherwise it may consider them to be in violation of the Fair Trade Act. This view is continuously upheld in court decisions and even in the Grand Justice Interpretation, but a substantial number of academic commentators take an opposite view. Those commentators consider the pre-issuance procedure incompatible with the nature of the demand letters, which is an important way for the intellectual property owner to exercise its right to exclude. They also contend that those procedures are overtly formalistic and fail to achieve their stated goals, which are to provide a credible basis for infringement allegations or sufficient information for receivers of the letters to determine whether the infringement exists. In light of past cases in Taiwan and the experience of anti-patent troll legislation in the United States, regulation that is solely focused on demand letters is prone to circumvention through directly resorting to civil or criminal court proceedings. To replace the procedural approach that the courts and the FTC have long embraced, this paper proposes a substantive approach which regulates three different types of demand letters in correspondingly different manners, and further recommends constraining the advantages that the issuer of imprudent demand letters may obtain in infringement litigation to disincentivize them. Hopefully, the contemplated proposal may well help to resolve this long-standing issue in Taiwan competition law.