22
Aug
2019
@IAM_magazine Patent litigation is way down but data on the number of patents being asserted suggests plaintiffs may have shifted… https://t.co/7nyR1B8spR Read more
Industry Reports - More Updates
Taiwan
Formosa Transnational
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20 Aug2019
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. Full text
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14 Aug2019
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. Full text
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6 Aug2019
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. Full text
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24 Jul2019
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. Full text
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3 Jul2019
Taiwan Supreme Court takes account of clinical trial period in <em>Pfizer</em>
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. Full text
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22 May2019
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. Full text
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15 May2019
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. Full text
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8 May2019
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. Full text
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17 Apr2019
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. Full text
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27 Mar2019
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. Full text
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12 Mar2019
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. Full text
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6 Mar2019
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. Full text
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20 Feb2019
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. Full text
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19 Dec2018
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. Full text
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12 Dec2018
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. Full text
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5 Dec2018
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. Full text
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24 Oct2018
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. Full text
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28 Aug2018
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. Full text
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18 Jul2018
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. Full text
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20 Jun2018
Timeframe for revocation of a generic mark
The Supreme Administrative Court has ruled that the decision of whether a mark is generic should take into account evidence only up until the revocation application was filed, in order to avoid any unfair advantage gained by either side while the litigation is pending. Full text
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23 May2018
Patent Attorney Act to include disability rights
The Executive Yuan has passed a draft amendment to Articles 4, 37 and 40 of the Patent Attorney Act. The amendment removes a provision which prevents those with disabilities from being patent attorneys or agents. Full text
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18 Apr2018
TIPO introduces new hearing system for invalidation proceedings
The Taiwan Intellectual Property Office recently implemented the Guidelines on Hearing Procedures for Patent Invalidation Cases, which is based on the Administrative Procedure Act and aims to save time and money by allowing adversarial hearings without amending the Patent Act. Full text
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7 Mar2018
Secondary transmission or display of work may qualify as fair use
The draft amendment to the Copyright Act is considered its most extensive revision in nearly 20 years. Under the revised act, protection for rights holders will not only increase, but will harmonise with social interests to safeguard the public’s right to use copyrighted work. Full text
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14 Feb2018
Fintech, intellectual property and regulatory sandbox
The regulatory sandbox aims to provide a ‘safe place’ for authorised individuals, legal entities, sole proprietorships or partnerships to test innovative financial products, services, business models and mechanisms, while ensuring adequate consumer and market protection. Full text
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17 Jan2018
Patent linkage system passed by Legislative Yuan
The Legislative Yuan recently approved the patent linkage system – a game changer for Taiwan’s pharmaceutical industry. Amendments to the Pharmaceutical Affairs Act will introduce a number of key changes for new drug marketing approval holders. Full text
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20 Dec2017
TIPC awards enhanced damages in trade secret misappropriation case
The Taiwan Intellectual Property Court recently delivered its verdict in a trade secret misappropriation case involving know-how relating to lens manufacturing process technologies. The verdict and enhanced damages award mark a new chapter in Taiwanese trade secret litigation. Full text
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15 Nov2017
Copyright Act to be revised
The Executive Yuan recently passed a draft amendment to the Copyright Act. The draft amendment was proposed and drafted by the Taiwan Intellectual Property Office, passed to the Executive Yuan for review and modification, and has been sent to the Legislative Yuan for inspection and formal amendment through three successive readings. Full text
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8 Nov2017
TIPO considers introducing contributory infringement into Patent Act
The Taiwan Intellectual Property Office (TIPO) is once again considering whether contributory infringement should be introduced into the Patent Act. In order to form its policy on the issue, TIPO recently held a meeting in which industry representatives were asked to comment on contributory infringement. Full text
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18 Oct2017
TIPO fuels debate between brand-name drug companies and generics
In recent years, brand-name drug companies and generic drug companies have seriously debated whether the patent linkage system should be implemented in Taiwan. The fiery debate between the two sides was reignited over the summer, with the Taiwan Intellectual Property Office supplying the fuel. Full text
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20 Sep2017
Amended examination guidelines and invitation for amicus curiae briefs
A recent amendment to the Guidelines for Patent Examination ensures that examiners are mandated to provide comprehensive reasoning in office actions in order to improve the examination quality of inventive step. An invitation for amicus curiae briefs by the Taiwan Intellectual Property Court echoes the amendment. Full text
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12 Jul2017
Supreme Administrative Court adopts strict standard in defining use of trademark
Although Article 5 of the Trademark Law is intended to define use of a trademark, it fails to distinguish between the difference in use in the course of trade by the trademark owner and use as infringement by a third party. Full text
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14 Jun2017
Grace period for invention patents and utility models extended
A recent amendment of the Patent Act aims to encourage the disclosure and circulation of techniques and to provide applicants with an enhanced possibility of obtaining patent protection for disclosed inventions and sufficient time to prepare their patent applications. Full text
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17 May2017
Supreme Court reduces plaintiff’s burden of proof in trade secret misappropriation cases
To better protect the interests of trade secret holders in Taiwan, the Supreme Court recently held that the burden of proof of the injured party shall be reduced in trade secret misappropriation cases. Full text
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26 Apr2017
Trademark case is a warning for rights holders to act promptly
Taiwan’s IP Court has issued a judgment regarding how to calculate when a right to compensation for trademark infringement expires. The case puts trademark owners on notice to initiate litigation as soon as possible once they become aware of a possible infringement. Full text
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29 Mar2017
Supreme Court confirms audit report qualified basis to claim royalty
The Supreme Court recently affirmed the IP Court’s judgment at appellate level, allowing a patent owner and licensor to claim for underpaid royalties based on an audit report conducted with the licensee’s consent, even when such an audit report did not follow the audit procedure required in the licence agreement. Full text
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15 Mar2017
TIPO to relax restrictions on post-grant amendments and online evidence
Post-grant amendments and invalidation procedures are two of the hottest topics in Taiwanese patent practice. In order to comply with principles developed by the IP Court, the Taiwan Intellectual Property Office recently made several amendments to the Patent Examination Guidelines for Post-Grant Amendments and Invalidation. Full text
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1 Feb2017
Supreme Administrative Court broadens ex officio powers for prior art investigations
The Supreme Administrative Court recently held in a patent invalidation case that the court should consider only the invalidation reasons and evidence submitted by the party petitioning for the invalidation action. The court further held that if the original evidence is insufficient, the court may ex officio investigate auxiliary or supporting evidence related to the original evidence based on the public interest. Full text
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14 Dec2016
Protection of trade secrets and guidelines for post-employment non-compete clauses
In practice, the protection of trade secrets often relies on confidentiality agreements and post-employment non-compete clauses. However, the latter often trigger labour rights issues. The key is phrasing a valid and enforceable post-employment non-compete clause. Full text
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5 Oct2016
Pokémon GO fever faces potential indirect patent infringement challenge
Before Pokémon GO fever hit Taiwan in August 2016, a small episode drew the attention of the IP industry and those who were eagerly awaiting the launch of Pokémon GO in Taiwan: a patent infringement claim filed against Niantic, Inc's other reality mobile game, Ingress. Full text
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20 Jul2016
Criminal trademark enforcement applies to preparatory acts for infringement
The Executive Yuan has approved a draft revision of the Trademark Law in order to meet the standards required to join the Trans-Pacific Partnership. The amendment will allow trademark owners to enforce their rights through criminal procedures against unauthorised uses of their registered trademarks on labels, tags, packaging or containers, even where these articles have not yet been applied to goods or services. Full text
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15 Jun2016
Amendment to Personal Data Protection Act facilitates e-commerce development
The articles of the Personal Data Protection Act on obtaining written consent have caused considerable problems for personal data controllers in the online service industry. As a result, the law was recently amended to exempt data controllers from obtaining written consent in certain circumstances. Full text
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18 May2016
TIPO announces draft amendments to Copyright Law
The Taiwan Intellectual Property Office (TIPO) has announced draft amendments to the Copyright Law. Among other things, to promote the distribution of a work, TIPO is amending the law such that the user is entitled to apply to TIPO for a compulsory licence for a publicly released work when it has unsuccessfully tried to obtain a licence for the work. Full text
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23 Mar2016
To postpone or not to postpone? New policy on postponement of patent issuance
The Ministry of Economic Affairs has announced the latest amendments to the Enforcement Rules of the Patent Act. Patent applicants can now apply for a postponement of patent issuance for up to six months instead of three months as previously. The new policy gives patent holders more room to consider and implement their patent strategies. Full text
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16 Mar2016
Owners of registered trademarks can claim under Article 25 of the Fair Trade Act
The Fair Trade Act identifies and addresses two types of unfair trade action related to trademarks: “symbol imitation" (Article 22) and “free-riding” (Article 25). In a recent case (the Supreme Court held that a registered rights holder can assert its rights based on Article 25 of the act. Full text
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24 Feb2016
IP Court issues urgent disposition within 24 hours
Just before the nine-day Chinese New Year holiday the IP Court granted a seven-day urgent disposition in a case involving the alleged patent infringement of parts of an express train cabin. Considering the urgency of the case, the applicant filed a motion for an urgent disposition two days before the holiday and the IP Court granted a seven-day urgent disposition within 24 hours. Full text
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16 Dec2015
Supreme Administrative Court deals with impermissible hindsight
The Taiwan Supreme Administrative Court (TSAC) has seldom discussed the meaning of hindsight. However, the TSAC recently revoked two IP Court judgments which concluded that the subject patents were invalid because they were made with impermissible hindsight. Full text
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2 Dec2015
Use evidence requirements in revocation of trademark applications
The IP Court recently issued a judgment holding that in a revocation application, a registrant must submit use evidence for each identified good. However, it stated that if other goods are of the same nature and use evidence is submitted for these goods, it can be held that the target mark has been used on all of the goods with a similar or identical nature. Full text
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28 Oct2015
Using divisional applications to save a patent
In Taiwan, the invention patent divisional application system provides a remedy to settle the scope of patent protection during an application and gives applicants the flexibility and freedom to plan and organise a favourable patent application strategy. Full text
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14 Oct2015
TIPO guidelines on examining trademark contrary to public order or good morals
The Taiwan Intellectual Property Office (TIPO) has recently rejected several trademark registration applications on the grounds that the trademarks were contrary to public order or good morals. In order to clarify the definition and provide a standard for applicants to follow, TIPO has now published the Guidelines for Examining Trademarks Contrary to Public Order or Good Morals. Full text
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26 Aug2015
Recent changes in Taiwanese patent practice
In order to reflect industry needs and to resolve problems with the existing patent system, the Taiwan Intellectual Property Office is planning a series of changes for patent regulation and the examination guidelines. Recent changes include the new regulation on delayed substantive examination. Full text
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19 Aug2015
IP Rights Police measures for dealing with online copyright infringement
The IP Rights Police were previously reluctant to tackle online infringement issues when unauthorised content was obtained through websites located overseas. However, in recent years they have started to tackle the problem from the bottom up by suppressing the illegal use of BitTorrent and other P2P software. Full text
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8 Jul2015
Speeding up the patent process: the Taiwan-South Korea PPH
On July 1 2015 the Patent Prosecution Highway (PPH) between Taiwan and South Korea took effect. The PPH facilitates the electronic exchange of industrial information and priority documents between the Taiwan Intellectual Property Office and the South Korea Intellectual Property Office. Under the PPH, patent applicants will be able to speed up their patent applications in both countries. Full text
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1 Jul2015
"Show me the money": making end users pay for copyrighted works
Of the three domains which govern mechanisms to make end users pay for using copyrighted works, contracts should be the first choice for copyright owners. The right contract can afford protection against infringement suits and ensure the proper allocation of legal risk. Full text
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27 May2015
The rule of foreseeability in filing history estoppel
The rule of foreseeability provides that where amendments are made during prosecution, equivalents foreseeable at the time of the amendments shall be deemed surrendered from the doctrine of equivalents. The IP Court recently affirmed the rule of foreseeability. As a result, applicants should recite their claims with the proper scope at the start of filing in order to avoid amendments during prosecution. Full text
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29 Apr2015
New electronic payments law will encourage patent growth
The Taiwan Intellectual Property Office Examination Guidelines for Computer Software-Related Inventions have encouraged software companies to engage in e-commerce. However, at present the provision of third-party payment services entails high legal risks. This is set to change in May 2015, when the Statute for the Administration of Electronic Payment Institutions takes effect. Full text
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22 Apr2015
Do you know where you're going to? Patent linkage proposals raise debate
In the past the Taiwanese authorities did not recognise a US-style patent linkage system because they believed that the judicial system was adequate to protect originators’ IP rights. However, in recent years patent linkage has become a critical issue during negotiations with the US government, so Taiwan has now pledged to establish a patent linkage system in the near future. Full text
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11 Feb2015
Check before shaking hands on IP transactions: new antitrust rules
The Legislative Yuan has passed an amendment to the Fair Competition Law, which will take effect once it has been published by the president. As antitrust issues should always be considered in IP transactions, both foreign and domestic players in the Taiwanese market should monitor the progress of the amendment. Full text
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21 Jan2015
From BANANE HERMES to 'Crying CHANEL': is trademark parody allowed?
Creative ideas often involve parody – an act of imitation which criticises or pays homage to an original work – in order to express the creator’s opinions, comments or humour. In Taiwan, the issue of parody mostly arises in copyright cases, in which fair use rules. However, the recently concluded 'Crying CHANEL' trademark dispute is a good example of parody under trademark law. Full text
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14 Jan2015
Protection for well-known marks expanded
Traditionally, the Taiwan Intellectual Property Office and the IP Court have held that there are different degrees of reputation and fame among so-called 'well-known' trademarks and that owners of such marks which seek protection against trademark dilution must show that their marks enjoy a particularly strong reputation and a high degree of fame. However, the Supreme Administrative Court has rejected this view. Full text
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3 Dec2014
Draft amendment to Copyright Act affects work made for hire
Following several years of discussion, the Taiwan Intellectual Property Office has published for public comment a draft amendment of the Copyright Act. However, the draft reaches no conclusions on certain crucial issues. For example, regarding the copyright ownership of work made for hire, the draft provides two options for public comment. Full text
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22 Oct2014
Profile for green-tech patent applications
Since January 1 2014 the Taiwan IP Office has accepted requests for accelerated examination of green-tech patents. By making such an accelerated examination request, an office action may be received approximately 70 days after the filing date, which is much shorter than the average 29-month examination period for general patent applications. Full text
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10 Sep2014
Must a company name include identical wording to a trademark in order to infringe?
Pursuant to a recent IP court decision, the wording in a company name need no longer be identical to a well-known trademark for the rights holder to claim that the company name infringes its well-known trademark. As the use of well-known trademarks as company names has become increasingly common, disputes between the owners of trademark rights and company names are also increasing. Full text
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20 Aug2014
Increasing investment in the cultural and creative industries
The Financial Supervisory Commission and the Ministry of Culture have announced a joint project to encourage investment in the cultural and creative industries in Taiwan. The project focuses on connecting the financial industry and the cultural and creative industries, and aims to increase loans from state-owned banks to the cultural and creative industries to at least NT$360 billion in the next three years. Full text
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30 Jul2014
TIPO issues decision in dispute over ownership of on-duty invention
As an administrative agency, the Taiwan Intellectual Property Office (TIPO) does not usually rule on a patent ownership dispute in an invalidation action, leaving such disputes to the courts. However, TIPO recently issued a decision regarding patent ownership on its own, based on existing evidence. Full text
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9 Jul2014
Patent examination guidelines amended for computer software-related inventions
Chapter 12 of the Patent Examination Guidelines specifically addresses computer software-related inventions. Following public hearings and consultation, amendments to the guidelines have now come into effect. Among other things, the guidelines adopt the principle that a software-related invention must possess technical character. Full text
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28 May2014
New law gives privacy protection to individuals’ communications records
The Taiwanese legislature recently amended the Communications Protection and Monitoring Act. Pursuant to the amendment, a prosecutor must obtain an order from a competent court in order to gain access to an individual’s communications records and identification information stored by a telecommunications service provider or an internet service provider. Full text
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23 Apr2014
Border control measures: a new weapon against patent infringement
Border control measures in Taiwan are undergoing a dramatic change. The new Regulation Governing the Detention of Suspected Patent-Infringing Goods by Customs gives patent owners a new and more effective weapon against patent infringement: they can now request detention of the infringing goods even before filing a patent infringement complaint with the court. Full text
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19 Mar2014
TIPO releases new Examination Guideline to clarify dual filing system
In Taiwan, the utility model patent system is usually associated with corresponding 'dual filing' measures, which allow an applicant to file an invention application and a utility model application with the Taiwan IP Office (TIPO) based on the same creations on the same day. TIPO recently released the new Examination Guideline dealing with this system. Full text
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5 Feb2014
Legislative amendment introduces administrative border control measures
At present, the Patent Act provides no administrative border control measures for a patentee to seek the detention of infringing goods. However, in an effort to strengthen patent protection, the legislature recently amended the act to add four border protection provisions, which will take effect by the end of March 2014. Full text
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8 Jan2014
Accelerated examination now available for green-tech patent applications
To encourage the development of green technologies, the Taiwan Intellectual Property Office has included green technology patent applications in the Accelerated Examination Programme (AEP). As of 1st January 2014, green technology patent applications are entitled to expedited examination if the applicant files an AEP request. Full text
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13 Nov2013
Patent Act amended for utility model applications and patents
The Patent Act was recently amended in relation to utility model applications and patents and the exercise of utility model patent rights. The key change for patent applicants is the revision of Article 32 pertaining to a patent application for an invention and a patent application for a utility model filed in respect of the same creation by the same applicant on the same date. Full text
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23 Oct2013
IP Court decision on non-obviousness affects corporate knowledge management
Under the Taiwanese Patent Examination Guidelines, overcoming technical bias is one of the four secondary considerations when determining non-obviousness. In terms of knowledge management, there are two kinds of technical bias: positive and negative. Although the Taiwan IP Court appears to deny the concept of negative bias, it is an issue worthy of discussion. Full text
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25 Sep2013
Changes in judgment benchmarks for administrative litigation of trademark registrations
According to past practice, in an administrative litigation regarding a trademark registration, if the law or factual situation changed before a decision was made, the new law would always be applied in the judgment. However, a recent judgment held that the choice of applicable law at the time of the judgment depends on whether the amended law is advantageous or disadvantageous to the applicant – the courts should thus not always adopt the amended law by default in an administrative litigation regarding a trademark registration. Full text
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11 Sep2013
Amended Trade Secrets Act gets tougher on trade and industrial espionage
The inadequacy of the Trade Secrets Act has been widely discussed, particularly in light of recent cases in which several former high-level executives of Taiwanese high-tech companies allegedly acquired technological secrets before leaving those companies and passing such secrets to competitors in mainland China. The government has now reviewed the act. Full text
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28 Aug2013
Simplified PPH support programme enhances international cooperation
The Taiwan Intellectual Property Office has enacted the new version of the TW-Support Using the Patent Prosecution Highway (PPH) Agreement Examination Programme in order to encourage patent applicants in Taiwan to use the PPH programme. The simplified support programme is expected to further support patent acquisition through the PPH agreements and promote international work sharing. Full text
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7 Aug2013
Early academic disclosure adversely affects patent prosecution
Early disclosures of Taiwanese academic work have increasingly been cited as references for rejecting the associated patent applications. Some inventors do not even realise that their inventions were disclosed. But what can be done if the invention is premature but early disclosure is inevitable? Full text
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10 Jul2013
Minor changes bring major advantages for patent owners
Although the newly amended Patent Law was enacted only on 1st January 2013, a follow-up amendment recently became effective. Even though only four articles were amended, the amendment has had a major impact on prosecution and litigation. The amendment is expected to encourage inventors to prosecute more invention-plus-utility model patent applications and will offer rights holders more flexibility when claiming damages in patent litigation. Full text
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12 Jun2013
Court finds no privacy violation in employer’s email surveillance
The Taiwanese High Court recently dismissed an employee’s tort privacy claim, finding that his employer did not infringe his privacy by monitoring his work email communications. The privacy dispute resulted from an alleged trade secret leak. However, it remains uncertain whether an employee’s online activities via employer-provided devices should also be subject to employer scrutiny. Full text
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24 Apr2013
Pornographic films are not works under Taiwanese copyright law
The Taipei District Prosecutor’s Office recently held that pornographic films produced by Japanese companies were not "copyrighted works" as defined in Article 3 of the Taiwanese Copyright Act. In doing so, the office followed a 1999 Supreme Court judgment, rather than the position of the Taiwan Intellectual Property Office. Full text
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3 Apr2013
New experimental-use exemption builds a more level playing field
Previously, the experimental-use exemption doctrine in Taiwan was very narrow – in order to qualify, the use could not be profit seeking. In addition, the Bolar exemption (which deals with specific experimental use) applied only to new drugs and not to medical devices. However, the new Patent Act broadens the scope of the two exemptions to produce a more level playing field for the pharmaceutical industry. Full text
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27 Feb2013
Taiwan enhances penalties for trade secret misappropriation
An amendment to the Trade Secrets Act has passed its third reading in the legislature, adding regulations with significantly higher fines and longer prison terms, as well as enhanced penalties levied on cases involving misappropriation and delivery of trade secrets to overseas countries. The amendments are a bid to deter industrial espionage in the Taiwanese market. Full text
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13 Feb2013
TFTC approves DVD patent pool formed by LG, Pioneer, Philips and Sony
The Taiwan Fair Trade Commission (TFTC) has approved a DVD patent pool formed by LG, Pioneer, Philips and Sony, on condition that it complies with five requirements ordered by the TFTC. The TFTC held that a single window for patent licensing will be beneficial to DVD manufacturers in Taiwan considering the transaction costs and royalty rates available. Full text
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24 Oct2012
New invention patent examination process in place
New regulations for combined interviews for related invention patent applications promulgated by the Taiwan Intellectual Property Office of the Ministry of Economic Affairs have come into force. The regulations are intended to address the substantial application backlog and to expedite the examination of patent applications. Full text
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15 Aug2012
Entrepreneurs urge closer IP protection cooperation between Taiwan and China
During the recent negotiations between Taiwan and China over the bilateral investment agreement under the Cross-Strait Economic Cooperation Agreement regime, IP rights protection unexpectedly became a hot topic. Dissatisfied with the joint efforts of both governments, some Taiwanese entrepreneurs have urged the government to aim for closer cooperation on IP rights protection. Full text
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6 Jun2012
Amending the Personal Data Protection Act
The long-awaited Personal Data Protection Act is still not in force, but the government recently announced that some of the controversial articles of the act will be amended before it takes effect and that the effective date of the act will not be postponed indefinitely. In general, the act strengthens an individual’s rights in connection with the disclosure, use and modification of his or her personal information. Full text
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2 May2012
TIPO determines royalty rates for public performance
The Taiwan Intellectual Property Office (TIPO) recently completed a review of several copyright public performance royalty rates set by copyright collective management organisations. The royalty rates reviewed and determined by TIPO will remain effective for three years. Full text
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29 Feb2012
Amendments to the Patent Act
The Legislative Yuan has passed the amendment to the Patent Act proposed by the Executive Yuan. Among other changes, the claims and abstract are no longer regarded as part of the specification, but rather as independent sections. Full text
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11 Jan2012
Warning letters must conform to Fair Trade Commission warning letter guidelines
Two recent Taiwan Supreme Administrative Court decisions confirm that IP owners are required to follow specified preliminary procedures when issuing warning letters to assert rights or to request the cessation of infringement. Full text
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9 Nov2011
Influence of draft Patent Act amendment on protection of biotech patents
According to Article 24 of the Patent Act, animal and plant varieties are not patentable subject matter. However, as an incentive to encourage the development of the Taiwanese biotech industry, in the draft amendment to the Patent Act the Taiwan Intellectual Property Office has proposed to allow animal and plant varieties as patentable subject matter in the near future. Full text
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19 Oct2011
Amendments to Trademark Law passed
A major amendment of the Trademark Law has been passed by the Legislative Yuan and promulgated by the Presidential Office. The new Trademark Law is expected to take effect in mid-2012. As the Trademark Law was last amended in 2003, the amendment contains substantive revisions. Full text
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27 Jul2011
FTC conditionally approves One-Blue, LLC patent alliance
The Fair Trade Commission (FTC) of the Executive Yuan has approved a merger application under which six companies each proposed to acquire one sixth of One-Blue, LLC’s stock rights and to form jointly a patent alliance, with the purpose of having One-Blue act as the patent holder. However, the FTC imposed certain conditions in order to ensure the overall economic benefit of the merger. Full text
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1 Jun2011
Biotech Take-Off Plan and new rules
Taiwan’s Executive Yuan announced its Biotech Take-Off Diamond Plan in 2009. The strategic plan is designed to strengthen trust in the infrastructure of IP protection through world-class expertise in integrating electronics and semiconductors, and to transform Taiwan into a regional hub for biotech research and development, manufacturing and operations. Full text
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25 May2011
Three-and-a-half years on: patent litigation before the IP Court
Since the creation of the IP Court in July 2008, there have been some interesting developments in patent litigation. But has the new IP Court resolved all the problems that existed in the old system? While the court has been able to address some of the key issues, in relation to some problems there is still room for improvement. Full text
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20 Apr2011
Cross-Strait Medical and Healthcare Cooperation Agreement
Following the ongoing trend of cross-strait cooperation, Taiwan and China have signed the Cross-Strait Medical and Healthcare Cooperation Agreement. The two countries have agreed to exchange and cooperate in regard to their systems and regulations, specifications, inspection technology and other related matters for pharmaceuticals across the strait. Full text
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16 Feb2011
Amendment to patent examination guidelines regarding determination of filing dates
In order to harmonise Taiwan’s practice further with international patent prosecution practice, the Taiwan Intellectual Property Office recently amended the Procedural Examination Guidelines. The amendment focuses on how to determine the filing date of a patent application. Full text
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10 Nov2010
A big step forward in cross-strait IP rights cooperation and protection
The Cross-Strait Agreement on IP Rights Cooperation and Protection was recently signed by the Taiwanese Straits Exchange Foundation and the Chinese Association for Relations Across the Taiwan Straits. Under the agreement, Taiwan will strengthen the cross-strait protection of IP rights under the principles of equality and reciprocity. Full text
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23 Jun2010
Business custom prevails in music and lyrics licensing
It is vital that both parties to a licensing agreement decide on the scope, duration and other limitations of the licence. However, even when expressly stipulated in the licensing agreement, the licence duration and scope may go beyond what was agreed to due to custom or business practice. The IP Court recently ruled on such a case. Full text
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24 Mar2010
Taiwan decriminalises specific types of secondary use of works
The Legislative Yuan has amended the Copyright Act in order to decriminalise certain specific types of secondary use, with the intention of improving the stability of the licensing market. In addition, the Copyright Collective Management Organisation Act has been promulgated in order to simplify the royalty rates and organise collectors into a single group. Full text
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27 Jan2010
All change at the TIPO: the Accelerated Examination Programme and a new fee structure
The Taiwan Intellectual Property Office (TIPO) has formally commenced use of the Accelerated Examination Programme. An applicant can now apply to speed up patent examination by providing an examination report or official action response received for a corresponding application abroad. In addition, the TIPO has amended the fee structure for patent examination. Full text
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30 Sep2009
IP Court clarifies whether online publication counts in patent spat
The IP Court of Taiwan has handed down valuable guidance on when online information is deemed to have been published under the Patent Act. In particular, the court found that even limiting access to a network by a password or a payment is not enough to prevent “publication”, according to the act. Full text
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22 Jul2009
Taiwan provides safe harbour for ISPs in copyright infringement cases
The Legislative Yuan has completed the final reading of the ISP Liability Limitation Bill, which strengthens the protection of copyrighted materials on the Internet. The amendment has its origin in the US Digital Millennium Copyright Act of 1998 and the safe harbour practices adopted by other countries in the past decade. Full text
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22 Apr2009
Impact of proposed Patent Act amendments on the pharmaceutical industry
The Taiwan Intellectual Property Office has proposed a wide range of amendments to the Patent Act. The proposed amendments cover a broad range of issues, including major changes to the provisions on pharmaceuticals. Full text
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14 Jan2009
TIPO publishes draft of amended Trademark Law
The Taiwan Intellectual Property Office has completed a draft of the amended Trademark Law. Among other changes, the draft law permits the trademark registration of motion marks, scent marks and holographic marks, and provides for a priority right based on a prior exhibition date. Full text
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13 Aug2008
New examination standards for computer software-related inventions
In order to deal with the rapid development of computer software technologies, the Taiwan Intellectual Property Office has issued the amended Patent Examination Standards for Computer Software. The amendments update the standards issued in 1998 to deal with pressing issues. Full text
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30 Apr2008
Big changes will bring Taiwan’s Patent Law up to date
In order to catch up with the rapid development of technology and changes regarding international IP rights, more than 40 articles of the Patent Law (approximately one-third of the law) are due to be amended. It is hoped that the amended law will improve efficiency and quality in patent applications. Full text
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16 Jan2008
First patenting guidelines for traditional Chinese medicine
The Taiwan Intellectual Property Office (TIPO) has issued draft patent examination guidelines that are specifically designed for Chinese medicine products. The guidelines, which are the first of their kind in this field, aim to clarify the examination procedure for both TIPO and patent applicants. Full text
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3 Oct2007
Act sets out new regime for patent attorneys
The Legislative Yuan has passed the Patent Attorney Act, which is due to come into effect early next year. The act will regulate the profession of patent attorney in Taiwan by establishing a national examination designed to test candidates on both their legal and technical knowledge of patent prosecution. Full text
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11 Jul2007
New laws clear the path for Taiwan’s IP court
The president has passed two new IP laws that clear the way for Taiwan’s long-awaited IP court. The laws set out detailed provisions concerning the organisation of the courts and how they should be administered. It is expected that the Judicial Yuan will set an implementation date for the new laws in early 2008. Full text
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30 Mar2007
New IP Laws in Taiwan
As a signatory to GATT since 1992, and a WTO member since 2002, Taiwan has continuously revised its IP laws and regulations in order to keep in line with the global community. As the protection and exploitation of IP rights have profound business implications and involve greater complexities than other property rights, two new IP laws were passed recently to establish a specialized court for IP disputes. Full text
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1 Jan2007
Special Notes on Taiwan Patent Prosecution
Over the years, Taiwan's Patent Act has been amended many times to pursue the international consensus and coincide with global patent practice. Because there exists several political issues relating to Taiwan’s identity, Taiwan has not been a signatory of many global patent treaties. As a result, several practices, specific to Taiwan have been created. In Full text
