Latest IP issues discussed in Judicial Yuan IP Law Seminar

Taiwan has had a specialised IP court for the adjudication of IP administrative litigation (appellate level), IP criminal litigation (appellate level) and IP civil litigation (district and appellate level) since 1 July 2008. Over the past decade the IP Court, along with IP professionals, have become the driving force for the reform and development of IP laws in the country.

On 6 May 2019 the Judicial Yuan held the IP Law Seminar, inviting all judges from the IP Court, along with representatives of judges from the district courts, the Intellectual Property Office (TIPO), the Ministry of the Economic Affairs, the Bar Association, the Patent Attorney Association and the Asia Patent Attorneys Association to discuss issues with IP law in administrative litigation and criminal litigation. Issues with regard to civil litigation (eg, patent litigation) will be discussed later this year.

IP administrative litigation

Issue one
If new prior art is submitted as evidence to the IP Court at the appellate stage of an invalidation action and the court believes that the patent claim at issue should be invalidated, should it:

• order TIPO to invalidate the claim (ie, TIPO has no choice but to invalidate it); or

• order TIPO to make a decision (ie, TIPO can choose whether it will invalidate the claim, which gives the patentee a platform)?

Conclusion: the IP Court should order TIPO to invalidate the patent claim at issue. This is because the IP Adjudication Law allows new prior art to be submitted and debated before the IP Court and the patentee can amend its claim during this period. TIPO must then carefully review and consider the new prior art and the validity of the claim.

Issue two
The contents of TIPO’s 2014 Patent Examination Guidelines are slightly different from TIPO’s 2017 Patent Examination Guidelines with regard to the review of the combination of prior arts and decisions of non-obviousness. When reviewing the prior arts and the combination thereof, should:

• “effective at the time the patent was granted” apply; or
• “effective at the time the invalidation decision is made” apply?

Conclusion: TIPO will apply the Patent Examination Guidelines that is effective at the time the invalidation decision is made. However, the IP Court is not bound by these guidelines. It may have a different opinion with regard to determining non-obviousness, which is an issue that lies that lies with the Patent Law rather than TIPO’s guidelines.

Issue three
When a trademark owner defends its trademark in a non-use invalidation procedure, should the trademark owner submit evidence of use:

• in the “similar categorisation of product/service” to maintain its mark; or
• in the “exact categorisation of product/service” to defend its mark?

Conclusion: evidence of use in the “similar categorisation of the registered product/service” should be sufficient for the trademark owner to maintain the validity of its mark.

Issue four
Article 30(1)(12) prohibits the registration of a trademark that has already been used by a third party. Does this prohibition extend to marks that have already been registered by a third party?

Conclusion: yes.

IP criminal litigation

Issue one
Is the concept of a ‘copy’ under the Trade Secret Act the same concept as under the Copyright Act?

Conclusion: yes. The concept of a copy under the Trade Secret Act is the same as that under the Copyright Act. Other types of trade secret infringement that do not constitute a copy under the Copyright Act cannot be categorised as a copy of a trade secret. However, said infringement may still be punished as another unlawful means of trade secret misuse.

Issue two
Is the scope of a business secret under the Criminal Law identical to the scope of a trade secret under the Trade Secret Law?

Conclusion: no. The scope of a business secret is not identical to the scope of a trade secret. The scope of a business secret is broader than the scope of a trade secret. The court will not use the legal requirements of a trade secret under the Trade Secret Law to define a ‘business secret’ in a criminal case. This was the only unanimous decision in this seminar.

Issue three
How should unauthorised use of a copyrighted photographic work in an online advertisement be evaluated under criminal law? Should it be deemed an unlawful copy or unlawful public transmission?

Conclusion: it is an unlawful copy as well as unlawful public transmission and should be punished as unlawful public transmission.

Comment

This seminar has clarified many practical IP law issues, although many remain unresolved. Although there was clarification on the scope of a business secret under the Criminal Law as non-identical to the scope of a trade secret under the Trade Secret Law, the legal requirements of a business secret under the Criminal Law remain unsettled – the IP Court has not yet reached a consistent decision. Close observation and constant updates of the developments of court decisions is crucial to IP professionals and enterprises seeking protection of their trade secrets.