LICENSING CHALLENGES
The litigation resulted in an order issued by the circuit court, finding that the Taiwanese defendant was properly Hague
served under convention, the and that by filing the motion to dismiss, it had submitted itself to the jurisdiction of the court. Even though
that particular motion to dismiss was later stricken, and the defendant in Taiwan and its US subsidiary were ordered to file an answer, both defendants failed to file a response or appear in court and were, therefore, found to be in default. A letter submitted to the court by the Taiwanese defendant
failed to meet
the standards of a legally sufficient answer or pleading. The defendant was ordered to pay a seven-digit dollar amount. This judgment was not appealed by the defendant.
Daniel Papst graduated from the University of Karlsruhe/Germany in electrical engineering and information technology in 2000, earning a Dipl. Ing., and has been a licensed German patent attorney since 2005. He joined Papst Licensing operatively in 2005, is a member of VPP, LES and IEEE, and is an INTIPSA fellow.
The question arises of how exactly the plaintiff was able to substantiate damages satisfactorily with the court. Particular sales amounts had been provided to the licensor orally during meetings with the licensee in Taiwan. It was then possible to establish, affidavits,
that provided to the sales numbers licensor
through witness had
been (plaintiff). This
turned out to be sufficient proof for the court to assess damages.
With investigator,
information it
acquired turned out that by a private the Taiwanese
brushless DC fan manufacturer had not only closed its US subsidiary but had even shiſted its import channel from a US West Coast city to a
port in Canada. Te verdict had to be enforced in Taiwan, since all US assets seemed to have disappeared. With the help of a local Taiwanese attorney, it was possible successfully to enforce the US court order in Taiwan, against Taiwanese defendant.
the
In the end, persistence in gathering information paid off and it was possible the
to track down licensee and prove its underreporting.
Alongside an experienced US patent attorney, the local Taiwanese attorney and local auditors in Taiwan helped the
licensor to establish
proof of underpayment with an enforceable verdict providing a substantial financial return. Anyone involved in licensing in South East Asia, especially Taiwan, would be well advised to consider similar steps for enforcing a licensing agreement. n
n Daniel Papst is a patent attorney managing director and co-owner and of Papst
Licensing GmbH & Co. He can be contacted at:
daniel.papst@
papstlicensing.com
www.worldipreview.com
World Intellectual Property Review Annual 2012
27
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