Question 67. If A and B jointly developed some patents in the name of A and had a contract that B could freely use all patents, could C make use of any of the patents through the consent from or cooperation with B?

Answer: Although C has a strong support from B having some kind of rights, before C could legally counteract against A, C needs a legal basis which could come only from competent official recordal showing that B really has some rights, e.g. being a legal licensee for the patents owned by A. Without the abovementioned official recordal both in Taiwan and Mainland China, in theory, A could legally take action against anyone else including C except B. Certainly, C could demand or ask support or even damages from B, this might not be a choice. Further, if it is possible that all products are arranged to be sold by B where the catalogue or the product can show the real manufacturer, e.g. C with the remark that the real manufacturer is just OEMing for B being the sole source of the products. By so doing, A will find no way to accuse any body.

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Question 68. Sometimes there are many inventors living all over the world and its going to be a big task to obtain everyones signature. Would a certified copy of the U.S. recorded Assignments which state they cover all foreign filings, be acceptable to the Taiwan Patent Office? How about the Chinese filings?

Answer: It will be appropriate to have a certified copy of the US recorded Assignments which state they cover all foreign filing in lieu of the original of the executed new assignment for the Taiwanese patent application.  Also, this is also true for the Chinese filings.

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Question 69. Must patent license agreements be registered at the Taiwan IPO? If registering a patent license agreement is required or even recommended, can you please explain the impact on failing to file a license agreement?

Answer: Please be advised that Article 59 of Taiwan Patent Law stipulates that "An invention patentee assigning, trusting, licensing to practice or pledging its invention patent right to another shall have no locus standi against a third party unless recorded with the patent-dedicated office."  Accordingly, if a license agreement is not recorded with TIPO, it is still effective and valid between the patentee and the licensee, neither of whom, however, has locus standi against a third party.

Specifically, as provided by Article 79 of Taiwan Patent Law that "An invention patentee shall mark on patented article or its package the patent number, may require licensee or compulsory licensee to so do, and shall not claim damages in failure to affix a mark, provided that this shall not apply if the infringer knows or it may be proved that the infringer could know the article is patented", the most direct disadvantage a patentee will suffer, if failing to add a provision in the license agreement requiring the licensee to place a patent marking and to 'formally follow' this marking notice requirement by recording with the TIPO such license agreement containing such provision, would be challenges from this article through failing to require the licensee to place a patent mark on the patented article or its package.

Accordingly, recording a license agreement is not required but recommended especially when the patentee does not have a product produced by itself.  Thus, if the patentee does not physically produce a product for patent marking, a provision in the license agreement requiring the licensee to place a patent marking and formally following this marking notice requirement by recording with the TIPO such license agreement containing such provision are strongly recommended for future or potential damages claim.

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Question 70. Given the understanding that the failure to record would only impact the ability to bring an action against a third-party, if we receive royalties directly from our licensees based on their sales, can you please explain (and provide examples if appropriate) the benefit of having a standing against a third-party?

Answer: The benefit of having standing against a third-party primarily goes to the licensee.  Nevertheless, since a license is a kind of patent working, in as much as the patent has been worked to have a physical product, which, however, has not been put with a required patent marking, a potential violation of Article 79 is thus raised, by which your ability to enforce against the third party might be affected.  Specifically, such violation originates from the failure to affix a patent marking rather than to record the license before TIPO.  Nevertheless, a recordal of a license agreement containing a provision requiring a patent marking before TIPO provides an avenue to excuse away the failure of the licensee (which will possibly be regarded as the failure of the patentee if we have not recorded the license) if we have recorded such license before the IPO since we have exercised our best efforts to urge the licensee to do patent marking by adding a provision in the license agreement.

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Question 71. If a client were to obtain a favorable arbitration award against one of our licensee customers, would the failure to have registered a patent license agreement impact our ability to obtain a judgment enforcing the arbitration award?

Answer: Theoretically yes, if the one licensee customer challenges our or other licensees' failure to affix the patent marking in Taiwan as required by Article 79 of the Patent Law unless we could prove the one licensee customer has known the existence of our patent. Again, it is to be reminded that the violation comes from failure to do the patent marking rather than the license recordal. Nevertheless, effectuating a license recordal might provide an avenue to excuse away our failure as mentioned above.

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Question 72. Would the failure to record a license impact obtaining royalties from our direct licensees?

Answer: Theoretically yes, except the first direct licensee, but practically no, since all of them have known the existence of our patents.

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Question 73. Would a challenge by a third-party have an effect on our ability to obtain revenues directly from our licensee customers?

Answer: Practically no, since all of them have known the existence of our patents.

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