4 Nov
2020

Patents in Asia 2020: Taiwan

Saint Island International Patent & Law Offices

How do you get a patent in your jurisdiction?

Types of protection and eligibility criteria

There are three types of patent in Taiwan: invention patents, utility model patents and design patents. The respective duration terms are 20, 10 and 15 years, all calculated from the filing date and effective from the publication date.

Invention patents

‘Invention’ as referred to in the Taiwan Patent Act means an innovative creation in a technical concept based on natural laws. The following are excluded from invention patent protection:

  • animals, plants and essentially biological processes for the production of animals or plants (note: microbiological processes are patentable subject matters in Taiwan);
  • diagnostic, therapeutic and surgical methods for the treatment of humans or animals; and
  • inventions, the use of which is detrimental to public order, morality or public health.

In alignment with global patent practice, invention patent applications are examined in terms of novelty, inventive step, industrial application and enablement.

Utility model patents

A utility model patent can be granted only for an innovation made with respect to the shape, structure or assembly of an article from a technical concept based on the law of nature. Method claims are proscribed from utility model patent protection.

The requirements concerning novelty and inventive step for invention patents and utility model patents are substantially the same – that is to say, any publication of an invention or utility model patent before the filing date destroys the novelty of the invention or utility model.

Design patents

Under the Patent Act, ‘design’ means a novel design created with respect to the shape, pattern or colour of a portion of an article of manufacture, the entire article or any combination thereof, thereby creating an appealing aesthetic effect. In general, the appearance of a portion of an article of manufacture (design in-part) and a computer-generated icon and graphic user interfaces are design-patent eligible.

The following are excluded from design patent protection:

  • configurations of an article of manufacture that is purely functional;
  • purely artistic creations;
  • integrated or electronic circuit layouts; and
  • articles, the use of which is detrimental to public order or morality.

Application process and costs

Any foreign applicant whose country of origin is a member of the Word Trade Organisation (WTO) or reciprocally allows Taiwan nationals to claim priority, or that is domiciled or has a place of business within the territory of a WTO.

Table 1. Basic official fees

 

The Patent Act provides a 12-month grace period for an invention or utility model and a six-month grace period for a design that was published in any printed publication other than a patent publication.

The basic official fees are outlined in Table 1.

Invention and utility model patent applications

To file an invention or a utility model patent application, applicants must submit the specification, claims, drawings and other necessary information and documents.

Once the filing formalities of an invention patent application have been completed, the application will be laid open for public inspection within 18 months from the filing date or the earliest priority date. In addition, the applicant must submit a substantive examination request for its invention patent application within three years from the filing date.

In contrast, a utility model patent application is not subject to substantive examination regarding novelty and inventive step. Provided that the formality requirements are met, the application will mature into a utility model patent. Before enforcing a utility model patent, the owner must request that the Taiwan Intellectual Property Office (TIPO) conduct a prior art search.

Design patent applications

To file a design patent application, applicants must submit drawings or photos that sufficiently disclose the claimed design.

Once the filing formalities have been completed, the application will automatically undergo examination for sufficiency of disclosure and patentability, during which time the examiner will conduct prior art searches.

According to the strict ‘unity of design’ requirement, a design patent application can cover only one embodiment. However, applicants can initially file a multiple design patent application and divide the application into divisional applications during prosecution.

Technology-based considerations (eg, software and pharmaceuticals)

Applicants can seek protection for an invention of:

  • improved computer technology;
  • software that improves operation efficiencies and reduces mistakes of machines; or
  • software that acts on human behaviours or feelings, among other things.

Likely due to the ‘industrial application’ requirement, the TIPO requires that, in claims calling for a computer software-related invention, a phrase which indicates an association with a computer-readable medium must be positively expressed in the preamble, regardless of the fact that the body of the claims has clearly suggested that the steps recited therein can only be implemented by a computer.

Regarding pharmaceutical-related inventions, claims calling for methods of treatment are unpatentable, while Swiss-type medical use claims are allowed. In addition, a patent-linkage system and patent-term extensions are available for pharmaceutical-related inventions.

What are the major administrative procedures in your jurisdiction?

Appealing patent office decisions

In the event that the TIPO issues a final formal rejection, the applicant can appeal before the Board of Appeals, which is independent of the TIPO. Subsequent remedial procedures include filing a petition for administrative litigation with the IP Court.

Third-party challenges – oppositions and invalidations

The opposition system has long been abolished in Taiwan. Nevertheless, to challenge the validity of a granted patent, applicants can file an invalidation action with the TIPO on the grounds that the patented invention:

  • calls for statutorily unpatentable subject matters;
  • lacks novelty;
  • lacks inventive step;
  • fails to meet the enabling requirement;
  • goes beyond the disclosure of the specification as originally filed; or
  • is not defined in a definite and precise manner.

Invalidation actions can be filed by any person anonymously, excluding actions challenging inventorship, which must be filed by an interested party.

After an invalidation action is initiated, the invalidation petitioner must submit all arguments and/or supporting evidence within three months from the date that the invalidation action is initiated. Thereafter, the petitioner can submit supplemental arguments only when the TIPO requests them.

Administrative enforcement options

There are no administrative enforcement options in Taiwan.

How are patents enforced through the courts?

Key forums and their composition

A civil IP lawsuit is tried at the IP Court unless the parties have previously consented to the jurisdiction of a district court or the defendant raises no objection to a district court’s jurisdiction where a lawsuit is filed.

To assist the judges in handling the technical aspects of a patent litigation and other technology-related disputes, the IP Court has set up a panel of technical examination officers, most of whom have worked as senior patent examiners with specialised skills in various technological fields.

The IP Court is empowered to review disputes on the validity of an IP right in an alleged infringement lawsuit or declaratory judgment action. However, it does not have the option to stay the lawsuit pending the outcome of an invalidation action against the disputed patent – even an invalidation action brought by the defendant as a counter-measure.

Figure 1 outlines the Taiwanese court system for IP disputes.

Figure 1. Taiwanese court system for IP disputes

 

Trial flow – discovery, trial, witnesses, timing and cost

The IP Court is noted for its expeditious proceedings; first-instance proceedings for a patent infringement suit may be concluded within a year.

Infringement proceedings can be divided into three stages. First, the IP Court holds one or two hearings to assess the value of the plaintiff’s asserted legal claims in order to determine the payable court fees.

Second, it performs a preparatory proceeding in which the parties are ordered to specify their disputed and non-disputed issues in the lawsuit, as well as the evidence, witnesses and experts that they intend to present or ask the court to summon to testify in the following hearings.

To gather evidence, a party may ask the court to issue an evidence preservation order against any person holding evidence. This motion can be made even before the litigation starts.

At the end of the preparatory proceeding, the judge sets the date for an oral argument proceeding, which is the third and final stage of an infringement lawsuit.

In the oral argument proceeding, the judge performs a bench trial. In principle, evidence that is not presented by the end of the preparatory proceeding cannot be introduced at trial.

The discovery proceeding conducted in the IP Court is of limited scope. Nevertheless, violating the discovery requirements can have substantial legal consequences, including a court sanction, by taking as truth the other party’s claims with regard to the evidence at issue or the fact to be proved by such evidence.

Legal doctrines, available remedies and appeals process

The plaintiff in an infringement litigation is required to establish that the defendant manufactures, sells, offers for sale, uses or for any of the above purposes imports a product that embodies the patent. In a method patent case, the patentee is required to establish that the defendant uses that method or uses, manufactures, sells, offers for sale or for any of the above purposes imports a product obtained directly by that method. The doctrine of equivalents applies in Taiwan.

Available remedies include:

  • injunctive relief;
  • damages; and
  • destruction (or other necessary disposal) of the infringing articles or the materials used in the infringing act.

Damages can be calculated by:

  • the plaintiff’s lost profit due to the infringement;
  • the defendant’s profit due to the infringement; or
  • reasonable royalties.

Where wilful infringement is found, punitive damages up to triple the amount are available.

Appeals can be brought to the second-instance panel of the IP Court and further to the Supreme Court if appellate requirements are met (eg, the value of the asserted claims exceeds approximately $50,000).

How are patents commercialised in your jurisdiction?

Patent working requirements, pharma-specific rules

There are no patent working requirements in Taiwan. Patent owners face no negative consequences (eg, a compulsory licence or forfeiture of standing to sue) for non-use.

Laws and rules applicable to licensing (including FRAND)

There is currently no law or regulation in Taiwan that requires a patent licence, even an SEP licence, to be conducted on FRAND terms. However, in practice, refusal to license an SEP on FRAND terms may constitute violation of the Fair Trade Act and may be subject to sanction by the Fair Trade Committee.

Under the Guidelines on Technology Licensing Agreements 2016, issued by the Fair Trade Committee, a patent owner can impose on a licensee clauses that:

  • restrict the licensee’s scope of practice to manufacture, use or sales;
  • restrict the term of the licence arrangement;
  • stipulate that, for ease of calculation, royalties for licensed technology that is part of a manufacturing process or that subsists in component parts will be calculated based on:
    • the quantity of finished goods manufactured or sold that employ the licensed technology;
    • the quantity of raw materials or component parts used that employ the licensed technology; or
    • the number of times such materials or parts are used in the manufacturing process;
  • require the licensee to pay fees after expiration of the patent term for use already made of the licensed technology, where the fees for use of a licensed patent are paid in instalments or on a post-paid (running royalty) basis;
  • require the licensee to grant a non-exclusive licence to the licensor with respect to any improvements to – or new applications of – the licensed technology, so as to guarantee the licensor a minimum amount of revenue from the licensing fees;
  • require the licensee to produce a minimum volume of goods employing the licensed technology, to employ the licensed technology a minimum number of times in the manufacturing process or to sell a minimum quantity of goods manufactured with the licensed technology;
  • restrict any transfer or sub-licence; or
  • restrict the licensee’s use of the licensed technology after the term of the licence has expired, insofar as the licensed patent remains valid.

Inventor remuneration issues

When an invention, utility model or design is made by an employee in the course of performing their duties, the right to apply for a patent and the patent right thereof will be vested in the employer, while the employee has a claim for appropriate remuneration, unless an agreement has been made otherwise. However, the law gives no guidance on how to determine whether a remuneration is appropriate.

This is an issue that the legislature intentionally left to be solved on a case-by-case basis.

Fiona Yin

Partner

[email protected]

Fiona Yin is a patent attorney and partner at Saint Island International Patent & Law Offices, practising in IP prosecution since 1992. She obtained a master’s from Taiwan University in 1991 and master’s in technology law from Taiwan’s Chiao-Tung University in 2003. She is a member of the Asian Patent Attorney Association.

Tony Tung-Yang Chang

Partner

[email protected]

Tony Tung-Yang Chang is an attorney at law and partner at Saint Island International Patent & Law Offices, practising in IP prosecution, enforcement, transaction and counselling for 15 years. He obtained an LLM from New York University in 2005 and an LLB from the National Taiwan University in 1996. He is a member of the Taipei Bar Association, the Asian Patent Attorney Association, the International Association for the Protection of Intellectual Property, the American Intellectual Property Law Association and the International Trademark Association.