Patents as property in Taiwanese jurisprudence:
rebuilding a property model for patents
Shang-pei Chung
A Thesis Submitted for the Degree of Doctor of Philosophy
Centre for Commercial Law Studies
Queen Mary University of London
October 2012
I confirm that the work presented in this thesis is my own and all references are cited accordingly. I accept that the College has the right to use plagiarism detection software to check the electronic version of this thesis. Shang-pei Chung ABSTRACT
The reconciliation of patents within the Taiwanese Law of Things has received negligible attention from legal scholars. The primary reason for this is the hesitation, by courts and scholars alike, to construct a new property paradigm, referring instead to treat patents under the existing rules on physical things. This dominating stance has had an impact on the manner in which Taiwanese courts adjudicate on the nature of patents, and dealings therewith. The aim of the thesis is to show that this stance is theoretically illogical.
The underlying issue is the different classification of patents within the civil and common law systems. The study employs a historical and comparative law methodology in order to inform an intra-law solution to the problem of how to overcome the classification dilemma. It does this by critically analysing the evolution of patent categorisation as personal property in common law and, by employing this foundation, seeks to distinguish the substantial differences in the concept of property between the common and civil law traditions. In light of these differences, and to establish a consolidated way of reconciling patents into the current Taiwanese legal framework, the thesis further analyses the similarity of the property notion under English common law and Taiwanese customary law, both of which are shaped by exclusion rules.
The hypothesis is that ownership of land within these two systems, in similar with that of patents, was not an absolute and outright ownership of land governed by inclusion rules, but was instead a freehold which granted intangible rights that could be divided by the duration of the holding. It is suggested that a theoretically more coherent property model can be achieved by adopting this approach, and analogising patents to the tenure systems that existed within both English common law and Taiwanese customary law.
To this end, the thesis proposes to contextually rebuild the property model for patents within Taiwanese law by the insertion of five new reform clauses into the Patent Act and the Civil Code.
1 ACKNOWLEDGEMENTS
This thesis would not have been possible without the support of several individuals who in one way or another contributed their valuable assistance in the preparation and completion of this study.
First and foremost, my utmost gratitude to the Ministry of Education in Taiwan and the Chiang Ching-kuo Foundation for International Scholarly Exchange, whose awards paid my tuition fees and living expenses. This thesis would not have been finished punctually without their steady financial support. Special thanks to Ms. Yu-wen Chen, Ms. Huei-chun Wu and Ms. Li-mei Hsun from the Culture Division of the Taipei Representative Office in the UK, and Ms. Hsiao-lan Yu from the Chiang Ching-kuo Foundation for their support and care.
I also extend sincere thanks to my three L.L.M teachers, Professor Richard L. Thurston, Professor Spenser Y. Hor and Professor Chi-min Yu for their generosity in providing letters of recommendation and encouraging me to study abroad. I am very grateful to Professor Richard L. Thurston for his constant encouragement and support in spirit for my study in London, with words unable to adequately express my full appreciation.
During my three year study, I have benefitted significantly from the space and resources provided by the Intellectual Property Archive, the Centre for Commercial Law Studies (CCLS), with special thanks to:
My supervisor, Professor Uma Suthersanen, for her insightful guidance. I am grateful to her for accepting me as her supervisee in a year she was excessively busy. Her generosity supporting this research and the dedication of her supervision will always be deeply appreciated.
My two reviewers, Dr. Catherine Ng and Dr. Ilanah Fhima, for their profound and insightful advice on this study.
Mr. Malcolm Langley, for his incredible efficiency and effort in obtaining unobtainable materials. This study has been availed by his passion and profession to work in many aspects, with an infinite number of words being unable to describe my full appreciation of his support. I thank him for being a lunch mate, a climbing mate and a very good friend while staying in London.
Mr. Darren Finch, for his kind help providing grammatical advice, and Dr. Gaetano
2 Dimita, for his invaluable feedback on my moot viva. Their generosity in sharing their advice and experiences will always be remembered and appreciated.
My fellow PhD candidates, both at the School of Law and CCLS, and especially Ana Alba Betancourt, Marc Dominic Mimler, Troels Larsen, Nilanjana Sensarkar, Georgina Tsagas, Kadir Bas, Katerina Stechova, Celi Dludlu and Henry Nampandu. The happy moments and witty conversations we have shared together will always be remembered.
This thesis is dedicated to my family, Chin-lung, Huei-ling and Meng-han, for their endless love and support. Without their strong support and back-up, this thesis would not have been possible to finish punctually. I would like to thank my father’s friend, Mr. Chu Liang-wei, for being the guarantor of my sponsorship contract with the government. Last but not the least, my special thanks to my mum, Huei-ling, for her encouraging words over the phone that gave me the strongest support to finish this study during intense moments of stress and loneliness.
3 Table of Contents
Abstract 1
Acknowledgements 2
Table of Content 4
Table of Figures 10
Terminologies 12
1 Introduction 26
1.1 Overview of the problem 26
1.2 Previous research 32
1.3 Objective and scope of this study 36
1.4 Hypothesis 39
1.5 Research methodology 39
1.6 Limitations 42
1.7 Study outline 43
1.8 Note on translations and terminology definitions 46
2 The problems of applying the Taiwanese Civil Code to 47
patent transactions
2.1 Overview of the Taiwanese Patent Act in the Civil Code 48
structure and the problems caused by real practice
2.2 The principle of separation and abstraction and the dilemmas 50
associated with patent transactions
2.2.1 What are the principles of separation and abstraction? 50
2.2.2 Various models for the principle of separation and abstraction 55
2.2.3 The principle of separation and abstraction in the Taiwanese 57
4 Civil Code
2.2.4 How do these principles influence intellectual property 59
transactions?
2.3 Popular opinions held by Taiwanese academia and courts 65
2.3.1 The principle of separation and abstraction equally applies to 65
intellectual property transactions
2.3.2 The reason for challenging this popular view 66
2.3.3 The courts’ and the Patent Office’s attitudes towards this 67
popular view
2.3.4 The fallacy of the Patent Office and courts’ opinions 69
2.3.5 Is the delivery requirement feasible in an intellectual property 70
transaction?
2.3.6 The impractical part of the requirement of delivery 71
2.4 The major flaw in the popular view 72
2.5 Placing the delivery requirement by registration: is it 73
applicable or not?
2.5.1 What is the principle of registration? 74
2.5.2 The court’s improper connection between the registry for real 75
property and patent registry
2.5.3 The significant defect in the court’s opinion 77
2.6 Conclusion 78
3 A history of misconception: resemble patents as physical 80
things
3.1 The influence of Japanese law in Taiwan before 1945 81
3.1.1 A brief history of Japanese Civil Code: from the French style 81
5 to the German style
3.1.2 A brief history of Japanese Patent Act 1885: patent law was 84
meant to cling to the French style of Civil Code but the code
was then changed to the German style
3.2 Japanese jurists’ efforts to bridge the gap using 85
quasi-possession theory
3.2.1 Before 1916: quasi-possession theory 86
3.2.2 After 1916: translating Joseph Kohler’s work and its 87
influence
3.2.3 An extension to licence after 1945 in Japan 89
3.2.4 The Japanese court’s opinion—the same as Japanese 91
academia
3.3 Japanese scholarship starts to influence Taiwanese academia 92
3.3.1 Before 1945: statutory laws came in and the practitioners’ 92
legal backgrounds
3.3.2 Before 1945: understanding by the people of Taiwan 93
3.3.3 Taiwanese Civil Code was influenced by Japanese 94
scholarship: the same problem as Japan’s Civil Code
3.4 The reaction of Taiwanese academia to Japanese influences: 96
Joseph Kohler’s influence and quasi-possession theory being
imported into Taiwan
3.5 Conclusion 98
4 A history of patents for inventions and the differences 100
between the common law estate and civil law real rights
4.1 Franchises vis-à-vis the doctrine of estates and seisin 103
6 4.1.1 What are franchises? 103
4.1.2 What is the doctrine of estates and seisin 105
4.1.3 Franchises and fee simple 112
4.1.4 The connection between franchises, patents for inventions 114
and the doctrine of estates
4.1.5 An extension of choses in action in the sixteenth century 116
4.1.6 A further extension of the word ‘property’ in the seventeenth 120
century
4.1.7 A extension of Roman law possession to intangible property 123
in the eighteenth century
4.1.8 Fill in John Locke’s theoretical gap from the eighteenth 127
century onwards
4.2 Clarification of some paradoxical terms 130
4.2.1 The ‘rights in rem’ 130
4.2.2 Different understanding of rights in rem 132
4.2.3 Fee simple is not equivalent to absolute ownership in real 133
rights
4.2.4 Vast expansion of the property notion to patents in the 135
common law of America
4.3 The differences between English common law and 143
Taiwanese statutory law
4.3.1 Allocating rights 143
4.3.2 The concept of ownership 146
4.4 Conclusion 151
5 A metaphor to landed property: towards a traditional real 156
7 rights concept
5.1 Traditional landholding system in Taiwan 158
5.1.1 Reason for choosing the landholding system 158
5.1.2 The concept of yeh 159
5.1.3 The concept of yeh-zhu and yeh-zhu-quan 160
5.1.4 The extension of the yeh concept 163
5.1.5 The concept of diàn 163
5.2 Conveyance of landholding 169
5.3 The similarities and difference between Taiwanese and 172
Chinese tenure
5.4 A comparative study of English and Taiwanese tenure 175
5.4.1 The similarities 176
5.4.2 The differences 177
5.4.3 Why the similarities matters 180
5.5 A property model for patents based on Taiwanese tenure 181
5.5.1 Prefatory 181
5.5.2 The law of ‘yeh’ instead of the law of ‘things’ 183
5.5.3 Yeh-zhu-quan instead of Taiwanese civil law ownership 185
suo-you-quan
5.5.4 Patent registration without the principle of registration 191
5.5.5 Different understanding of ‘assignment’ in English common 194
law and Taiwanese civil law and a better translation of patent
assignment
5.6 Assignments and licences in a map of Taiwanese tenure 198
5.6.1 Ass