BY JACKY J. J. WANG
In patent civil litigation, in addition to claiming to exclude infringement and damages, the patentee also declares that the alleged infringer shall bear the litigation expenses. Similarly, in addition to requesting to dismiss the litigation, the alleged infringer will also declare that the patentee shall bear the litigation expenses. According to Article 78 of the Code of Civil Procedure, the losing party shall bear the litigation expenses. Further, according to Article 87, Paragraph 1 of the Code of Civil Procedure, upon entering a final judgment, the court shall, on its own initiative, decide the responsibility for litigation expenses. Litigation expenses mainly include the court expense and the necessary expenses for litigation. Generally speaking, the necessary expenses during litigation shall be included in the calculation of litigation expenses, such as calling witnesses or submissions for assessment. According to Article 77-23, Paragraph 1 of the Code of Civil Procedure, taxable expenses for photocopies, video recording, transcripts, translation, daily expenses, travel expenses of witnesses and expert witnesses, and other expenses necessary for litigation are all included in the litigation expenses. Taking the assessment as an example, the question remains whether the expenses of the assessment submitted by the plaintiff before filing a lawsuit, rather than during litigation, can be included in the calculation of litigation expenses. In this respect, reference may be made to the opinions of the Civil Judgment of the Intellectual Property Court 107 (2018) Ming Juan Hsu Tzu No.21.

In the above cited judgment, the patentee issued a warning letter to the alleged infringer before filing a lawsuit and simultaneously prompted a technical evaluation report for utility model. Later the patentee commissioned a third party to prepare an assessment report and initiated a lawsuit claiming that its patent right was infringed. It is noteworthy that when the patentee claimed damages, the expense of commissioning a third party to prepare an assessment report before litigation was also included in the calculation of damages. However, the Civil Judgment of the Intellectual Property Court 107 (2018) Ming Juan Hsu Tzu No.21 provides different opinions regarding the nature of expenses of assessments before litigation. The judgment held that the patentee commissioned a third party to conduct an infringement assessment before litigation, which is an expense derived from protection of rights. The expense of conducting an infringement assessment should be included in the litigation expenses, and not in the damages caused by infringement of the patent right. Therefore, the judgment held that the patentee’s request regarding the expenses of assessment before litigation cannot be deemed as damages.

Accordingly, the above cited judgment does not agree that the assessment expenses before litigation belong to the damages resulted from the infringement of patent rights; nevertheless, the judgement declared that the assessment expenses before litigation shall be included in the calculation of litigation expenses. In detail, it is pointed out in the judgment that in addition to the taxable expenses for photocopies, video recording, transcripts, translation, daily expenses, travel expenses of witnesses and expert witnesses, the litigation expenses further include “other expenses necessary for litigation.” Since the law has clearly affirmed that the litigation expenses further include “other expenses necessary for litigation,” before the Judicial Yuan has set a standard, the court should determine “other expenses necessary for litigation” based on the actual case to meet the original legislative intention.

Furthermore, it is stated in the above cited judgment that due to the diversity in current civil litigation, a variety of necessary expenses may be incurred. As long as such expenses are incurred during the litigation procedure and at the court’s direction; even if there is no standard regarding "other expenses necessary for litigation," such expenses should be included in the litigation expenses. However, the situation in the present case is more controversial. The assessment report submitted was commissioned by the patentee before filing the lawsuit, i.e., not at the court’s direction. In addition, since the Intellectual Property Court has priority jurisdiction over patent litigations, many litigation cases proceed without a third party assessment. Accordingly, whether the assessment expenses of commissioning a third party before filing a lawsuit can be deemed as "other expenses necessary for litigation” is questionable. However, the judgment further explained that whether conducting an assessment is necessary should be determined from the perspective of the parties before filing a lawsuit, rather than merely from the perspective of the court. Therefore, a patentee who commissioned a third party to prepare an assessment report to carefully assess the necessity of filing a litigation and finally won the patent infringement litigation would agree that the assessment expenses should be included in the "other expenses necessary for litigation.”

It is pointed out in the above cited judgment that the incorporation of the assessment expenses before litigation into "other expenses necessary for litigation” is also helpful for innocent alleged infringers who were forced to respond merely because the plaintiffs have subjectively deemed that their patents were infringed, which is conducive to effective use of judicial resources. Determining whether a specific article falls within the scope of patent rights actually involves technical and legal professional judgments, and seeking a patent infringement assessment to determine the necessity of litigation is thus reasonable. On the other hand, third party assessment expenses should not be excluded from the necessary litigation expenses simply because the patentee is able to make a judgement and claim infringement. After all, the parties play an important role in civil litigation and strong evidence is crucial for a favorable outcome. Thus, if the patentee is allowed to make a motion for an assessment during litigation and such assessment expenses can be included in the litigation expenses, then why can't the patentee be allowed to provide a third party assessment before filing a lawsuit and such assessment expenses can be included in the litigation expenses? A third party assessment report available before litigation allows the litigation to focus on the alleged issues from the very beginning, so as to protect the timely jurisdiction claim of both parties. The guarantee of a timely jurisdiction claim is an essential constitutional right when instituting legal proceedings. An expense that can help to guarantee such right should not be immutably deemed to be excluded from "other expenses necessary for litigation.”

In summary, the above cited judgment finally concluded that the assessment report submitted by the patentee involved technical judgments, and the necessity of conducting a third party assessment and thus incurring an expense before litigation should be affirmed in light of whether to file a lawsuit. In addition, assessment expenses in the amount of NT 35,000 with a receipt were deemed reasonable. Therefore, such expenses should be included in the calculation of litigation expenses. It is further pointed out in the above cited judgment that the present case is quite unique. During litigation, the alleged infringer neither argued whether the alleged article falls within the scope of patent rights nor argued against the third party assessment submitted by the patentee before litigation, which is also recognized by the court. Under different circumstances, the judgment may have been different. However, the opinion regarding the litigation expense in the above cited judgment is different from previous more conservative judgments and may be an important reference in legal practice.

Reference: https://demo.artie.com.tw/taie.com.tw/beta/data/uploader/files/old/no.237a.pdf (Last visit: January 30, 2020)