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Jul
2020
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Industry Reports - More Updates
Taiwan
Formosa Transnational
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24 Jun2020
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. Full text
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10 Jun2020
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. Full text
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20 May2020
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. Full text
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29 Apr2020
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. Full text
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22 Apr2020
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. Full text
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25 Mar2020
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. Full text
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29 Jan2020
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. Full text
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8 Jan2020
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. Full text
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9 Oct2019
Taiwan IP Court’s perspective on TIPO’s <em>ex officio</em> 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. Full text
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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
<p>Timeframe for revocation of a generic mark</p>
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.
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23 May2018
<p>Patent Attorney Act to include disability rights</p>
The Executive <i>Yuan</i> 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.
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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
<p>Secondary transmission or display of work may qualify as fair use</p>
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.
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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
<p>Patent linkage system passed by Legislative Yuan</p>
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.
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20 Dec2017
<p>TIPC awards enhanced damages in trade secret misappropriation case</p>
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.
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15 Nov2017
<p>Copyright Act to be revised</p>
The Executive <i>Yuan</i> 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 <i>Yuan</i> for review and modification, and has been sent to the Legislative <i>Yuan</i> for inspection and formal amendment through three successive readings.
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8 Nov2017
<p>TIPO considers introducing contributory infringement into Patent Act</p>
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.
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18 Oct2017
<p>TIPO fuels debate between brand-name drug companies and generics</p>
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.
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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
