BY JACKY J. J. WANG

According to Article 96 of the Code of Civil Procedure, where a plaintiff has no domicile, office, or place of business in the R.O.C., the court shall, by a ruling on motion by the defendant, order the plaintiff to provide a security for the litigation expenses if the plaintiff in the litigation is a foreign juridical person. The court shall do the same when such security is found to be inadequate or not correctly provided during the process of the proceedings. The provision of the preceding paragraph is not applicable in the case where either the plaintiff's claim is not disputed by the defendant or the plaintiff's assets in the R.O.C. are sufficient to compensate for the litigation expenses. In accordance with the Ruling of the Supreme Court 102 (2013) Tai Kan Tzu No. 404, the assets mentioned in Article 96 of the Code of Civil Procedure are not limited to tangible property. Intangible property, such as patent rights and trademark rights, can be assigned, licensed or pledged and have objective exchange value and therefore should be deemed as assets. However, how does the plaintiff claim its assets in the R.O.C on the basis of its patent rights? Reference may be made to the opinions of the Civil Ruling of the Intellectual Property Court 109 (2020) Ming Juan Su Tzu No.31 and the Civil Ruling of the Intellectual Property Court 109 (2020) Ming Juan Kan Tzu No.10.

In the aforementioned Civil Ruling of the Intellectual Property Court 109 (2020) Ming Juan Su Tzu No.31 and the Civil Ruling of the Intellectual Property Court 109 (2020) Ming Juan Kan Tzu No.10, the plaintiff filed a patent infringement litigation against the defendant, and then the defendant claimed in the litigation proceedings that the plaintiff was a foreign juridical person who has no domicile, office, or place of business in the R.O.C. The court expenses for the first instance, second instance, and third instance of this lawsuit were estimated to be about NT$550,000, and the defendant claimed that the court shall, by a ruling on motion by the defendant, order the plaintiff to provide a security for the litigation expenses in accordance with Article 96 of the Code of Civil Procedure. With respect to the defendant’s motion, the plaintiff claimed that the property value of its patent rights, patent applications and trademark rights in Taiwan was sufficient to cover the litigation expenses, and there was no need to provide a security for the litigation expenses. In this respect, it is stated in the Civil Ruling of the Intellectual Property Court 109 (2020) Ming Juan Su Tzu No.31 that the plaintiff should be able to obtain commercial benefits of more than the maximum amount of NT$550,000 by implementing, licensing or establishing of a pledge on the patents and trademarks at issue as well as selling the patents and trademarks. The plaintiff did not submit a license agreement or a patent valuation report as evidence. However, in the so-called cost method, the cost of developing or purchasing patented technology is regarded as the reasonable price of the patent, which emphasizes that the evaluation of the cost value of the intangible asset itself is that according to the cost method, the value of the patent is equal to the sum of the development costs, also known as the cost accumulation method. As far as accounting is concerned, the purchase of patented technology should be accounted for at cost, which includes all expenses and expenditures that make the patent right available for use for its purpose. Therefore, the theory of the cost method cited in said ruling is based on the assumption that the value of the patent should not be less than the cost of developing or purchasing the patent to make it available for use, so as to assess whether the plaintiff’s assets in this country are sufficient to cover the litigation costs. In other words, the cost for the plaintiff to develop, purchase or maintain the patented technology shall be deemed as the reasonable value of the patent. Since calculating the annuity payments shows that the plaintiff must pay a high maintenance cost for the patent right, the court determined that the property value of the patent right owned by the plaintiff was sufficient to cover the litigation costs and thus rejected the motion by the defendant.

As mentioned above, although the defendant was not satisfied and filed an appeal to the ruling, the Civil Ruling of the Intellectual Property Court 109 (2020) Ming Juan Kan Tzu No.10 also supports the opinions of the original ruling. Said ruling further points out that calculating value at cost is a method of accounting, and its basic concept involves the principle of balance of assets and liabilities. From the perspective of cost estimation of accounting principles or tax accounting, there is no error or impropriety in this calculation method. The so-called evaluation of value, the price agreed by the buyer and the seller, is certainly the actual realization of the property value. For the property owner, the cost someone is willing to pay for holding the property based on the so-called reasonable and rational economic behavior model in economics is also one of the calculation methods for property value, which is the basic principle of economics and accounting. From the principles of accounting and economics, if the value of the plaintiff’s patent should be at least not less than the cost of the annuity, according to experience and logic, the value in the market should theoretically be greater than the annuity. This ruling held that the defendant’s limitation of the concept of property to tangible property was unacceptable.

The defendant was dissatisfied and filed a re-appeal. However, the Civil Ruling of the Intellectual Property Court 109 (2020) Ming Juan Su Tzu No.31 and the Civil Ruling of the Intellectual Property Court 109 (2020) Ming Juan Kan Tzu No.10 were finally affirmed by the Ruling of the Supreme Court 109 (2020) Tai Kan Tzu No. 1361, which holds that the judgments regarding assets are determined by the same court by means of choosing evidence, and it was irrelevant to whether the application of law is manifestly erroneous. Therefore, the defendant’s re-appeal was dismissed. In light of the opinions of the aforementioned rulings, it can be seen that when a patentee who is a foreign juridical person is asked to provide a security for the litigation expenses, the patentee can calculate the amount of the maintenance cost of his intangible properties to explain that the patentee has sufficient assets in Taiwan. Therefore, there is no need to provide a security for the litigation expenses.

Reference:

專利權之維護成本，可作為外國法人在台有資產之佐證 （江郁仁律師） （第266期2021/03/11）

民事訴訟之審理，均依循先程序後實體之原則進行，倘訴訟之原告為外國法人時，按原告於中華民國無住所、事務所及營業所者，法院應依被告聲請，以裁定命原告供訴訟費用之擔保；訴訟中發生擔保不足額或不確實之情事時，亦同。前項規定，如原告請求中，被告無爭執之部分，或原告在中華民國有資產，足以賠償訴訟費用時，不適用之。此於民事訴訟法第96條定有明文。又依最高法院102年度台抗字第404號裁定之意旨，前揭規定所稱資產，並不以有形財產為限，無形財產如專利權、商標權，既得以之讓與、授權他人實施或設定質權，而有客觀交換價值存在，自屬資產之一種。然而，若原告欲以其擁有之專利權主張其在中華民國有資產，究竟應如何為之，或許可參考智慧財產法院109年度民專訴字第31號裁定與109年度民專抗字第10號裁定之見解。
在前述案例中，因原告向被告提出專利侵權訴訟，被告遂於程序上主張原告係一外國法人，於中華民國無住所、事務所及營業所，概算本件訴訟一、二、三審之裁判費約為新台幣55萬餘元，聲請法院依民事訴訟法第96條之規定，裁定命原告就訴訟費用供擔保。對於被告之聲請，原告主張其於台灣享有之專利權、專利申請案及商標權之財產價值，足以支付本件訴訟費用，並無供訴訟費用擔保之必要。對此，智慧財產法院109年度民專訴字第31號裁定認為，原告等經由系爭專利、商標之實施、授權他人實施或設定質權，以及銷售系爭專利、商標商品等方式，應可獲得遠高於原告應供擔保之最高數額55萬餘元之商業利益。縱原告等未提出授權契約或專利鑑價報告為憑，惟所謂成本法者，係指將開發或購置該專利技術所需之花費，視為該專利之合理價格，乃強調評估無形資產本身之投入成本價值，是依成本法將專利之價值等同於開發成本之總合，亦稱成本累積法。就會計而言，購入專利技術應以成本入帳，該成本包括所有使專利權處於可供其目的之使用狀態下之一切費用及支出。職是，該裁定爰參酌成本法之理論係假設專利價值，不得低於開發或購置專利使其處於可供使用狀態下之成本，來評估原告等在我國之資產是否足以支付訴訟費用，即以原告開發、購置或維護該專利技術所需之花費，視為該專利之合理價格。由於計算年費繳納之結果可知原告等就上開專利權須支付高額之維護成本，故法院認定原告享有專利權之財產價值，足以支付訴訟費用，進而駁回被告之聲請。
承上，被告雖不服提出抗告，但智慧財產法院109年度民專抗字第10號裁定亦支持原裁定之見解，更進一步指出，以成本計算價值雖係會計作帳之方式，惟其基本概念仍不失資產負債損益衡平之原理，從會計作帳原理或稅務會計之費用估列角度而言，此種計算方式並無違誤或不當之處。而所謂價值之評估，買賣雙方合意之價格固然不失為財產價值之具體實現，在財產持有人一方而言，基於經濟學上所謂合理理性者之經濟行為模式，其願意為持有財產所付出之成本亦為財產價值計算方式之一，此為經濟學及會計作帳之基本原理。從會計及經濟之原理進一步申論，倘原告上開專利之價值至少應不低於其所繳納之年費成本，則依經驗法則及論理法則，其市場上之價值理論上即應更甚於年費之價值。此裁定認為被告將財產概念侷限於實體財產，自非可採。
被告雖不服提出再抗告，惟前揭109年度民專訴字第31號裁定與109年度民專抗字第10號裁定，最終獲得最高法院109年度台抗字第1361號裁定維持，認為有無資產之判斷均屬原法院證據取捨之權責，核與適用法規是否顯有錯誤無涉，故駁回被告之再抗告。透過上述裁定之見解可知，當外國法人身為專利權人，面臨訴訟費用供擔保之聲請時，可藉由主張其所擁有無體財產權之維護成本具體計算後之數額，釋明在臺灣有足夠資產而無就訴訟費用供擔保之必要，來克服此一程序上要求。

*Assistant Manager of International Patent Division at Tai E International Patent & Law Office