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Updates from an international team of correspondents who report on recent developments in IP law and practice in their home jurisdictions, as well as strategic issues and those relating to finance, dealmaking and valuation.

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Taiwan

New 19 JANUARY 2022

Impending amendments set to rewrite Taiwan’s copyright regime

The amended Taiwanese Copyright Act, once passed, will have a transformative impact in introducing greater flexibility with regard to the economic rights of a work. It will also change the ways in which content is broadcasted.

12 JANUARY 2022

Copyright decision highlights the commercial hazards of using orphan works

Taiwan’s top court has clarified the scope of compulsory licensing in an attempt to safeguard consumers from becoming involved in copyright infringement disputes further down the line.

27 OCTOBER 2021

Proposed repair clause highlights tension between consumer rights and industrial development

A proposed amendment to the Patent Act, which aims to introduce a repair clause, has received a mixed reception from the country’s IP professional. In particular there are fears that it could conflict with the act’s stated aim of protecting innovation.

20 OCTOBER 2021

TV shopping channel found liable for counterfeits provided by third party

A recent case involving luxury goods company Burberry serves as a timely reminder that retail platforms and the third parties that supply them can both be found liable for trademark infringement.

29 SEPTEMBER 2021

Applicants watch out – TIPO publishes stricter examination guidelines

The Taiwan Intellectual Property Office has tightened its rules on amending claims and specifications. In particular, it is vital that applicants disclose the correct numerical values and ranges of values in the original claim, as any amendments to these will no longer be accepted.

08 SEPTEMBER 2021

TIPO announces second version of draft amendment of Trademark Act

Brand owners across Taiwan have welcomed the news that the Taiwan Intellectual Property Office is proposing further amendments to the country’s trademark laws, which will be the most substantial changes in 10 years.

18 AUGUST 2021

Taiwan Supreme Court hands down judgment on the protection of luxury handbag design

In good news for brand owners, the Supreme Court has found in favour of two luxury handbag brands, in a case where a company had copied the accessories’ appearance design.

28 JULY 2021

Overhaul of Taiwan’s patent examination guidelines signals new dawn for software-related inventions

In welcome news for inventors, the guidelines for filing patent applications for computer-related software inventions have been updated. Crucially, they provide clarity on the definition of an ‘invention’.

05 MAY 2021

Taiwan government launches plan to overhaul IP Case Adjudication Act

IP professionals across the country are calling for significant updates to the IP Case Adjudication Act. Here is everything you need to know about the potential amendments.

28 APRIL 2021

Cartier’s successful registration of a 3D shape shows tide is turning for TIPO’s definition of ‘proof of use’

In good news for brand owners, two recent cases involving 3D shapes signal a shift towards a broadening of what constitutes use of a mark.

07 APRIL 2021

Amendment relaxes rules for rights holders examining suspected counterfeits

Draft amendments to the Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademarks should make it considerably easier for trademark owners – particularly those based outside Taiwan – to examined seized goods believed to be infringing their rights.

03 MARCH 2021

What Taiwan’s potential restructure to the patent appeal system means for rights holders

TIPO’s proposed amendments to the patent appeal system will reconfigure Taiwan’s IP practice, affecting inter partes and ex partes reviews and the office’s level of involvement in disputes on patent ownership.

27 JANUARY 2021

TIPO offers free copyright holder search notice publication service to promote use of orphan works

In welcome news for brand owners, the Taiwan Intellectual Property Office has launched a free publication service, meaning that applicants can swiftly meet the necessary licence requirements with regard to orphan works.

23 DECEMBER 2020

TIPO publishes update on covid-19 clinical trial pharma patents

The Taiwan Intellectual Property Office (TIPO) has published an updated list of Taiwanese patents covering potential covid-19 drugs in clinical trial, including a number of new small molecule anti-viral drugs.

16 DECEMBER 2020

Trademark Act to be amended to regulate trademark agents

The Taiwan Intellectual Property Office has drafted amendments to the Trademark Act, which will affect who can qualify as a trademark agent in Taiwan. Previously, an individual only required an address in Taiwan, but now the regulations are much tighter.

23 SEPTEMBER 2020

China-based karaoke machine company faces prosecution for copyright infringement in Taiwan

The popular pastime of karaoke is coming under increasing scrutiny as the device that contains the music may infringe Taiwan’s recently amended Copyright Act. Thunderstone, a Chinese set-top box company, has been caught in the crossfire in the first karaoke-related infringement case in Taiwan.

02 SEPTEMBER 2020

TIPO to launch Positive Interview Programme for start-ups

The Taiwan Intellectual Property Office is shortly to launch a new pilot accelerated programme, the Positive Interview Programme, targeted at start-ups. This will allow applicants to obtain a patent within four months from the filing of a request to utilise the programme – a much quicker examination procedure than the general procedure

26 AUGUST 2020

Case law clarifies jurisdiction over labour disputes involving IP rights

While the Taiwan IP Court handles many IP cases in the country, it does not have exclusive jurisdiction over such cases. A recent case involving alleged copyright infringement by former employees shines a light on how jurisdiction should be determined between the IP court and an ordinary court, and how this is transferred from one to the other.

19 AUGUST 2020

Taiwan’s IP rights statistics for the first half of 2020

The Taiwan Intellectual Property Office has released its filing numbers from January to June 2020, revealing the top filers among research organisations and universities, as well as for domestic and international applications.

15 JULY 2020

Official proposal for revising design patent examination guidelines released

New patent examination guidelines look set to boost design applications for icons and GUI at the Taiwan Intellectual Property Office, as more focus is placed on the role of software programs in inventions.

24 JUNE 2020

TIPO to review IP legislation following conference on covid-19 patent reforms

On 17 June 2020 the head of the Taiwan Intellectual Property Office, industry leaders and IP experts met to discuss potential changes to the patent and trademark litigation regime and other reforms to Taiwan’s IP environment. The conclusions from the event will be published as part of the Chinese National Federation of Industries' annual white paper.

10 JUNE 2020

Latest amendments to the enforcement rules of the Patent Act

Taiwan’s Ministry of Economic Affairs has announced that it is amending Articles 17 and 39 of the Enforcement Rules of the Patent Act. Sequence listing can now be submitted electronically to exempt applicants from the obligation to provide its hard copy and third-party opinion can be submitted before a patent application for invention is laid open.

20 MAY 2020

Taiwan Supreme Court remands IP Court criminal trademark infringement judgment for the first time

February 2020 marked the first time that the Taiwan Supreme Court has remanded an IP Court decision in a trademark case. Trademark practitioners are now waiting to see how this will shape the practice of trademark enforcement and defence in Taiwan.

29 APRIL 2020

Taiwan Supreme Court broadens principle of exhaustion for trademarks

Recent case law shows that if a company wishes to make parallel imports into Taiwan, the principle of exhaustion cannot be relied on.

22 APRIL 2020

Fast-track trademark applications scheme due to launch on 1 May 2020

The Taiwan Intellectual Property Office has announced that it will start accepting fast-track trademark applications as of 1 May 2020. Here is all you need to know about the scheme.

25 MARCH 2020

Race against the virus: covid-19 clinical trial pharmaceutical patents in Taiwan

The outbreak of the novel coronavirus is affecting every aspect of the global community. As a result, researchers and pharmaceutical companies are moving as fast as possible to develop drugs to combat the pandemic.

29 JANUARY 2020

Information that does not qualify as a ‘trade secret’ may still be protectable under the Criminal Code

Trade secret protection is a significant issue for business owners today. While recent developments in IP court practice make it easier for a trade secret holder to protect its intangible assets under the Trade Secret Act, as well as the Criminal Code, it is crucial that the legal requirements of what constitutes a trade secret are met.

08 JANUARY 2020

Chanel fails to defend mark against retail store’s reference

Chanel has claimed that a local retail chain in Taiwan infringed its trademark on marketing materials to celebrate the store's 30th anniversary. The Taiwan IP Court noted that although the retail chain had used the CHANEL mark and a picture of the Chanel product on marketing materials, it had also used its own trademark and thus the relevant consumers clearly understood that the CHANEL trademark referred to the prize only. The court maintained that no infringement took place.

09 OCTOBER 2019

Taiwan IP Court’s perspective on TIPO’s ex officio examination

The Taiwan IP Court has revoked an invalidation decision made by the Taiwan Intellectual Property Office (TIPO) due to a procedural illegality. The court ruled that TIPO improperly intervened in the disputes between the parties and examined the invalidation case ex officio without giving the patentee the opportunity to respond to its opinions.

20 AUGUST 2019

Supreme Court rules on international jurisdiction in a copyright infringement case over online shopping website

The Supreme Court has held that if a website owner located in a foreign country knows or should have known that Taiwan would be the major market of its online shopping business, and despite this knowledge engages in the sale of allegedly infringing products in Taiwan, the courts there will have international jurisdiction over the website owner as Taiwan will be considered to be the place where the result of damages emerged.

14 AUGUST 2019

New measures for technical evaluation reports for utility model patents

Given the uncertainty surrounding the utility model patent application process in Taiwan, underlying patent rights can often be abused by patentees. To help utility model applicants, a new measure has been introduced, giving patentees that receive an unfavourable evaluation the chance to provide an additional explanation.

06 AUGUST 2019

Blocking trademark registrations via third-party submissions in Taiwan

On 20 June 2019 the Taiwan Intellectual Property Office’s new Examination Guidelines titled Third-Party Submissions came into force. The guidelines have clarified the parameters for submission requirements, who can file a third-party submission and how these declarations are reviewed by the examiner.

24 JULY 2019

A follow-up to the inclusion of biosimilars in Taiwan patent linkage system

In an abrupt u-turn, the Taiwanese Food and Drug Administration (FDA) has gone from excluding biosimilars from the patent linkage system in November 2018 to including them in January 2019. The disputes that arose as a result of the exclusion still cannot be resolved, even though the FDA said that it had considered the impact on local companies as most of them are generic or biosimilar drug manufacturers.

03 JULY 2019

Taiwan Supreme Court takes account of clinical trial period in Pfizer

The Supreme Court has handed down its decision on patent-term extensions in landmark case Pfizer v Novartis. This is not only a victory for Pfizer but also a milestone in the Taiwanese patent system, demonstrating that the court has finally gauged how to determine the clinical period for patent-term extensions.

22 MAY 2019

Latest amendments to the Patent Act add muscle to patent filing system

The Legislative Yuan has passed draft amendments to the Patent Act, which are intended to strengthen Taiwan’s legal system for patent filing. The amendments include relaxed restrictions on the range of and deadline for filing divisional applications and an extension of the patent term for design patents.

15 MAY 2019

Latest IP issues discussed in Judicial Yuan IP Law Seminar

On 6 May 2019 the Judicial Yuan held the IP Law Seminar to discuss issues with how IP law intersects with administrative litigation and criminal litigation. In attendence were judges from the IP Court, along with representatives of judges from the district courts, the Intellectual Property Office, the Ministry of Economic Affairs, the Bar Association, the Patent Attorney Association and the Asia Patent Attorneys Association.

08 MAY 2019

Supreme Court clarifies reasonable protection measures

The Supreme Court has clarified the definition of ‘reasonable measures’ in a decision that will please companies operating in Taiwan. The judgment challenges the previous assumption that companies must take all possible measures to meet the reasonable measures requirement, which placed a significant burden on them.

17 APRIL 2019

Territory principle applies to products never displayed in Taiwan

The Supreme Court has issued a decision in which it stated that trademark use constitutes products that were never displayed in Taiwan but were ordered from there. The method of sales in the case at hand, in which the vendor entrusted a third-party manufacturer in a third country to export products directly to the purchaser, is a very common arrangement in the modern market.

27 MARCH 2019

Whose popcorn is that? Movie company obtains orphan works licence

Unlike works in the public domain, orphan works are still protected by copyright laws. The regulations on their use have changed since the Taiwan Intellectual Property Office granted its first orphan works licence in 2014 and it is vital for cultural and creative industries to remain on the right side of the law.

12 MARCH 2019

What businesses should do to protect their trade secrets in the US-China trade war

Since the US government launched a series of indictments against Chinese enterprises, Taiwan-based Chinese companies, among others, have become extremely cautious about being the next victim or suspect in a trade theft case. However, there are signs that the situation may be about to improve.

06 MARCH 2019

Winnie the Pooh and politics – Taiwanese horror game misstep is still copyrighted work

The Chinese public was shocked when a satirical message was found on a poster that featured in a horror game developed in Taiwan. While many have recovered from the incident, it calls into question the nature of copyrighted material.

20 FEBRUARY 2019

Proposed patent linkages system sparks controversy

The Taiwan Food and Drug Administration has issued the second version of the Enforcement Rules for Patent Linkage. The inclusion of biosimilar drugs in the patent linkage system has sparked controversy and extensive discussions in the industry.

19 DECEMBER 2018

Supreme Administrative Court finds “same problem” is key to combining prior art evidence

Taiwan’s Supreme Administrative Court has rendered a judgment finding that “the substantive same problem to be solved” is key to combining multiple prior art evidence – a crucial issue in determining whether a patent has been disclosed.

12 DECEMBER 2018

IP Court rules on exhaustion in trademarks

The IP Court of Taiwan has declared that the principle of exhaustion set out in the Trademark Act will not apply if the domestic and foreign trademark holders are different.

05 DECEMBER 2018

Taiwan Supreme Court issues decision on unfair enrichment in patent infringement case

In this case brought before the Taiwan Supreme Court, the rights holder failed to enforce its intellectual property after a substantial period of time, giving the defendant reason to believe that it never would.

24 OCTOBER 2018

Trade Secrets Act to be revised

The Legislative Yuan has announced that the amendment draft of the Trade Secrets Act, which shares similarities with the Intellectual Property Case Adjudication Act, will be a top-five priority for discussion.

28 AUGUST 2018

Supreme Administrative Court holds that well-known marks must be known among general customers in order to claim dilution

After a change of heart, the Taiwan Supreme Administrative Court has sided with the Taiwan Intellectual Property Office and the Intellectual Property Court, agreeing that the owner of a well-known trademark must prove that its mark is known among general consumers in order to claim that there is a likelihood of dilution of its mark.

18 JULY 2018

Taiwan IP Court invalidates basic patent for white LED

Taiwan’s IP Court recently invalidated one of the fundamental patents for white light-emitting diodes, known as the ‘YAG' patent, due to a lack of inventive step. The court concluded that the evidence of prior art could allow a person with the relevant skills to recreate the patent invention.

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