The Study of the International Jurisdiction and the Applicable Law in Intellectual Property Cases Involving Foreign Elements

• Main Authors: Hsuan-JuChen, 陳玄儒
• Other Authors: Yi-Tien Lin
• Format: Others
• Language: zh-TW
• Published: 2013
• Online Access: http://ndltd.ncl.edu.tw/handle/86818009565765068187

碩士 === 國立成功大學 === 法律學系 === 101 === Under the principle of legality of right in intellectual property (IP) right and territorialism, IP rights can’t be departed from the law which recognized its existence and gave validity, and its territorial nature limits its cross-board force. Due to the difference in IP rights laws in different countries, the different applicable laws in the same issue result in different outcomes and lead to the conflict of laws. There is no unitary international civil procedural law and international choice of laws rules currently, so this thesis focused on the determination of the international jurisdiction and ascertainment of the applicable law in IP rights cases involving foreign elements. This thesis divided the IP rights cases into three issues: the existence and validity of rights, assignment and licence contracts, and infringement, to compare with the differences of the application of the new and old laws in Taiwan, and center on the analysis of comparative law to understand the current international trend via the international norms, the rules drawn up by the international academic groups and other countries’ laws, it can be the reference for our country’s future legislation. There is no express rule under the Taiwan law for the international jurisdiction in IP disputes. On the basis of the registration procedure is closely related to the national sovereignty of the country where the right is established, this thesis approves that the action of existence and validity of registered IP rights, the court in the State where the rights has been registered shall have exclusive jurisdiction in relevant international norms. And whether the scope of exclusive jurisdiction in infringement proceedings is controversial, as the result of the action of infringement doesn’t involve the problems of right itself and registration, it is appropriate that infringement proceedings shall not apply to the exclusive jurisdiction rule. The international jurisdiction of the actions of infringement or contracts on the assignment or licence contracts of IP rights is determined by the general rule - the general jurisdiction rule of ‘actor sequitur forum rei’ and the special jurisdiction rules of torts or contracts. It is uncontroversial that parties can make the choice of court agreements in contract matters, this thesis agrees to the choice of court agreements in infringements matters, which is based on the reason that the infringement actions don’t apply to the exclusive jurisdiction and mainly judge whether the rights was infringed and the remedies. The new Law Governing the Application of Laws to Civil Matters Involving Foreign Elements in Taiwan which came into effect in 2011 set up an applicable law rule of IP rights, which adopts ‘Lex Loci Protectionis’, the law of the State for which protection is claimed, and Article 42 only deals with the issues of IP rights itself. The international tendency of choice of law rules on the cases of existence and validity of rights and the infringement of rights both are lex loci protectionis, adopting the lex loci protectionis is conformed to the territorialism and also made judges closer to parties’ demand. In addition, the application of principle of party autonomy in disputes on IP rights infringement is generally recognized, however, the scope of the party autonomy is not quite identical. Party autonomy is recognized internationally with regard to the choice of applicable law in contracts on assignment or licence contracts of IP rights cases, and when the law applicable to the contract has not been chosen by the parties, the law of the country with which it is most closely connected shall be apply. Through the ‘Characteristic Performance’, it becomes a more explicit rule to ascertain the ‘most closely connected’. From the analysis of comparative law, the laws of international jurisdiction and applicable law in IP rights in Taiwan indeed have the demand and need the improvement in types and detailed regulations. Through the study of this thesis intends to provide the suggestions in practice and law amending on the parts which the law doesn’t cover, which leads to the consistence with the internal and foreign judgments, and reaches to the goal of private international law.