The legal nature and elements of a request to publish the court decision:

1. There are many laws currently including general provisions which allow a proper or necessary order for recovering reputation. The examples include the back-end sentence of Paragraph 1 of Article 195 of the Civil Code, Article 84 of the Patent Act, Article 85 of the Copyright Act, and Article 40 of the Plant Variety and Plant Seed Act. So, in addition to general provisions, there are many examples of a certain provision that lists several kinds. For instance, Article 84 of the Patent Act, Article 85 of the Copyright Act, the front-end sentence of Article 40 of the Plant Variety and Plant Seed Act all provide a cause of action as a measure to correct name expression. Additionally, Article 89 of the Patent Act and Article 89 of the Copyright Act all provide a measure where it is permissible to hold that the person (acting person) who infringes the patent bears the cost of publish all or part of the court decision in any newspaper (See Justice Li Zhen Shan’s concurring opinion on Judicial Yuan Interpretation No. 656).

2. Section 7 “Damages and Litigation” of Chapter 2 “Invention Patent” of the Patent Act provides civil liabilities of infringement of an invention patent. Wherein, Article 84 provides several causes of action, such as awarding damages, removing infringement, preventing infringement, destroying infringing products, raw materials, or equipments, or implementing other necessary actions, and recovering reputation harmed by infringing the right of name expression. Article 85 provides several causes of action, such as methods for calculating damages, damages of harming business reputation, and putative damages for intentional infringement. Article 89 provides a cause of action to request the publication of a winning, finalized court decision in any newspaper. Regarding that a patentee may move for publishing all or part of the winning, finalized court decision on any newspaper, it was originally provided in Article 87 of the Patent Act, stating “After the court decision was finalized, a victim may move to request the court to publish all or part of the decision in any newspaper and to ask the losing party to bear the cost.” Later, the provision was amended on January 21, 1994 as Article 93, stating “After the ‘winning’ court decision is finalized, a victim may move to request the court to order to publish all or part of the decision in any newspaper and to ask the losing party to bear the cost.” The statute was amended and renumbered as Article 89 on February 6, 2003 (that is, the current statute). But, the bill of the Patent Act amendment approved by the Executive Yuan on December 3, 2009 and transferred to the Legislative Yuan for examination deleted the statute. The reason was: “ … 2. Regarding the matter that a victim moves for publication of all or part of the court decision in any newspaper, in litigation practice, when a plaintiff files a complaint, relying on the back-end sentence of Article 195, Paragraph 1 of the Civil Code, stating, “for one whose reputation is infringed, she may request a proper order to recover her reputation,” the complaint may include a request for the court in its decision to order the acting person to do newspaper publication as a remedy of damages. So, it is necessary to have a duplicate provision here. The provision is, therefore, deleted. The relevant provisions of the Civil Code now govern.”

3. Article 3 of the Constitution protects people’s freedom of speech. In addition to the protection of an active right to express views, an inactive right not to express views is also protected (See Judicial Yuan Interpretation No. 577). Now, Article 89 of the Patent Act allows a court to order an acting person to bear the cost to publish all or part of the winning, finalized court decision in any newspaper. That involves a right not to express views protected by Article 11 of the Constitution as freedom of speech. Thus, in an incident of patent infringement, if it is necessary to limit an acting person’s right not to express views so as to recover the patentee’s reputation, there are the degree to the situation where legal interest of a moral right was illegally infringed and the content forced to be expressed, both of which should be carefully considered so as to make a proper decision to fulfill the proportionality principle vested in Article 23 of the Constitution.

4. Generally observing the legal framework of the Patent Act regarding the civil liabilities of infringement, the rules of the past Patent Acts regarding publication of a court decision, the legislation and amendment reasons, and the future trend of law amendments, it is concluded that a request of court decision publication is in its nature a proper or necessary order for recovering a patentee’s reputation. Doubtlessly, the owner of an invention patent exclusively possesses exclusive rights vested in Article 56, Paragraphs 1 and 2 of the Patent Act. Without the consent of the owner of a product patent, others who make, offer for sales, sell, use, or for above-mentioned purposes, import that product, or without the consent of the owner of a method patent, others who use that method, and use, offer for sales, sell, or for above-mentioned purposes, import products made directly by that method, not only unlawfully retard complete enforcement of patent rights. Assume that such infringing act further causes the patentee’s reputation (famousness or good will) to get damaged. For these non-monetary damages, it is concerned that depending on a case-by-case situation of the damages on her reputation, compensation or recovery may not be achieved by monetary damages. Thus, the Patent Act grants to a court a power to decide a measure to ask an acting person to pay for publication of all or part of the court decision in any newspaper as a proper or necessary order for recovering a patentee’s reputation, which is deemed to be legitimate in terms of purposes.

5. Article 89 of the Patent Act which provides a measure to request court decision publication may cost a lot of money, though. But, it is not a national public power to force people to express ideas under their names. The situation is more close to that of Judicial Yuan Interpretation No. 577 which involves the labeling of the percentages of nicotine and tar on cigarette products. The nature is factual information which, as opposed to forcing people to apologize under their names, should be considered as a measure that causes little harm to a right not to express views (See Justice Li Zhen Shan’s concurring opinion on Judicial Yuan Interpretation No. 656). Though, this provision allows a court, upon a motion of a patentee, to order an acting person to bear the cost to publish all or part of the winning, finalized court decision in any newspaper. However, it is not that, upon the patentee’s motion, the court then should grant the motion without any space of judgment made. “Recovery of reputation” should still be a prerequisite. In addition, that is part of the system of civil damages for purposes of recovery of the original condition and compensation of damages. A court’s order to permit publication of the court decision in any newspaper is based on that the patentee can recover his original, objective judgment made by the society. The court can make a free judgment on its order without the constraint of the patentee’s motion. And, the factors the court needs to consider include not only considering whether the patentee’s reputation is injured by the act of the acting person’s infringing the patent, but also necessarily determining the degree of the situation of harmed reputation and the sufficiency of the publication order for the patentee to recover his reputation, so as to give a fair judgment. Then, within a reasonable scope, it is fine to let the acting person to bear the cost of publishing all or part of the court decision. It is not to go beyond the necessary extent of reputation recovery, such that the acting person’s right not to express views is over limited.

6. As for the assertion that Petitioner bases on Article 1 of the Patent Act, it is asserted that because unlawfully infringing other’s patent is infringement of public legal interest, a court should be unable to determine whether a request of such publication in any newspaper is necessary, as well as which way of newspaper publication and what scope of that are deemed to be appropriate, so as to make a proper judgment. Though, Article 1 of the Patent Act provides that its legislative purpose is to encourage, protect, and use inventions and creations, so as to promote industrial development, which declares that “a patentee’s private interest” and “public interest of the society and public and industries” are protected under a balance of rights. However, the interpretation of any individual provision of this Act should still be based on the legislative purposes of that individual provision, and then on the relevancy between the measures and purposes to make a judgment related to the appropriateness principle and necessity principle. Petitioner ignores the regulatory system of the civil liabilities of infringement and the provision of Article 89 of this Act which the purpose of court decision publication is to protect a patentee’s reputation. Instead, the assertion that infringing a patent equals to infringing public legal interest is directly proposed, so as to deny the court’s authority of judgment, which is indeed not acceptable.

Patent infringement, Publication of the decision, reputation recovery, freedom not to express, discretion of the court