Re-examination of Article 59 of the Taiwan Patent Act: Focus on the Issues of Exclusive Licensing

• Main Authors: Hsu, Hsiao-Han, 徐小涵
• Other Authors: Fan, Chien-Te
• Format: Others
• Language: zh-TW
• Published: 2011
• Online Access: http://ndltd.ncl.edu.tw/handle/16741810675880861706

碩士 === 國立清華大學 === 科技法律研究所 === 99 === Licensing to practice the issuing patents could enhance the beneficial effect of utilizing intellectual property. Therefore, the order of patent license transactions is very important. Art. 59 of the Taiwan Patent Act is a provision related to the system of changes in patent rights which substantially influences the order of patent license transactions. However, disputes arise concerning the legal effect of Art. 59, which is unclear and controversial. Accordingly, this dissertation attempts to provide an appropriate interpretation of ways to resolve disputes regarding the legal effect of Art. 59. The disputes would be focused on exclusive patent licensing because the attributes of exclusive licensing is more complicated than that of assignment and non-exclusive licensing. Through collecting and analyzing related foreign and domestic literature, the definition and attributes of exclusive licensing would be established, firstly. Then the disputes of one transaction and double transactions of exclusive licenses would be analyzed. Regarding the issue of one transaction, in my point of view, the judiciary resolution and scholars’ opinions are favorable. With regard to the issue of double transactions, it shall be applied to Art. 37, para. 2 of the Taiwan Copyright Act (which is called “the concept of succession right”) by analogy for public interest. Consequently, whether registered or not, the first licensee can maintain his/her exclusive legal status; and the bona fide second licensee cannot assert rights against the first, but can claim warranty against defects of title to the patentee (licensor) based on Art. 349 of the Civil Code.