Lee and Li Attorneys at Law updates

Fair use may not extenuate infringement on right of paternity
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 18 September 2017

The Copyright Act provides that "fair use of a work shall not constitute infringement on economic rights in the work". However, should an exploiter of a work be considered to be infringing the author's right of paternity if he or she exploits the work within the reasonable scope of fair use, as specified in the act, but fails to provide a clear indication of the source of the work? The IP Court recently provided conflicting opinions on this matter.

Major amendments to customs border measures
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 04 September 2017

Recent amendments to the customs border measures, which play a key part in Taiwan's trademark protection strategy, deserve attention. The regulations were amended in order to strengthen the protection of the owner of a registered trademark, implement e-governance measures and simplify administrative procedures. Key amendments include the extension of the trademark protection period and the introduction of new notification methods.

Sole licences under Copyright Act
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 28 August 2017

The Supreme Court recently held that the 'sole licence' in a contract differs from the 'exclusive licence'. The sole licence merely restricts the copyright holder from sublicensing the already licensed rights to a third party; an exclusive licence prohibits the original copyright holder from sublicensing the same rights to a third party for exploitation and even exploiting the same rights for his or her own purpose.

Investigating technical evaluation reports of utility model patents
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 21 August 2017

According to the Supreme Administrative Court, when conclusions of a technical evaluation report differ from invalidation actions, the IP Court has the authority to determine patent validity. In accordance with the System of Administrative Litigation Events, if the IP Court holds that evidence and materials provided by the parties have successfully resolved any patent validity disputes, its judgment should not be found to contravene the laws and regulations.

IP Office invalidates patent based on combination of evidence not presented by invalidation petitioner
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 07 August 2017

Although a patent invalidation action is considered to be a type of public review system, it has the legal nature of a private rights dispute in general. Therefore, the patent invalidation petitioner bears the burden of proof to provide reasons for the patent invalidation request. However, when and to what extent should the IP Office conduct ex officio investigations and explore evidence not provided by the patent invalidation petitioner?

Closest prior art in determining non-obviousness
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 24 July 2017

The non-obviousness of a claimed invention is generally determined by investigating whether a person having ordinary skill in the art is motivated to combine the disclosure of said prior art references and can easily accomplish the claimed invention. However, there is no specific regulation in Taiwan as to whether there is any priority in the application of said prior art references.

Court rejects reverse confusion doctrine for granting junior trademark registration
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 17 July 2017

The IP Court adopted the reverse confusion doctrine in 2015 and granted registration for a trademark that was filed later than a similar senior trademark, but deemed to be more famous. The Supreme Administrative Court reversed the IP Court judgment and held that the first-to-file rule, as stipulated by the Trademark Act, should be consistently cited for protection of a registered senior trademark.

TIPO revises examination guidelines for post-grant patent amendments
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 10 July 2017

Post-grant patent amendments are allowed in Taiwan. According to the Patent Act, a patentee may delete a claim, narrow a claim's scope, correct typographical or translation errors and clarify any ambiguous statements. However, no post-grant amendment can substantially enlarge or alter the scope of the claim as issued. The Taiwan Intellectual Property Office recently published an amended version of the Guidelines for Patent Examination, which concerns post-grant amendments.

Revised customs recordation regulation will improve trademark protection
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 19 June 2017

A revised regulation, effective from January 1 2017, stipulates that the recording of newly filed or renewed trademarks will be valid until the expiration date of the trademark registration. It is no longer necessary to renew a customs recordation each year, which will save money and increase anti-counterfeiting efficiency.

Amendment of Patent Act – grace period for novelty and inventive step
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 05 June 2017

An amendment of the Patent Act with respect to the grace period for novelty and inventive step was recently promulgated through a presidential decree. To guide the implementation of the amended Patent Act provisions, the Enforcement Rules of the Patent Act were also amended. The amendment of the Patent Act will more closely align the patent system with international patent practice and strengthen protection for patent applicants.

IP Court's view of patent contribution rate
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 08 May 2017

The damages calculation for patent infringement litigation is determined by the IP Court pursuant to the calculation method claimed by the patentee. When considering whether to accept the patent contribution rate as the basis for determining damages, the facts and evidence furnished by the parties play a key role. It is yet to be seen what the court's specific standards for determining the patent contribution rate will be.

TIPO accepts applications for deferring substantive examination of invention patent applications
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 01 May 2017

In addition to accepting applications for accelerated invention patent examination, the Taiwan Intellectual Property Office (TIPO) now accepts applications for the deferment of substantive examination of invention patent applications. TIPO's reasons for why it now accepts deferment applications include the consideration of patent applicants' application tactics and the facilitation of applicants' global patent layouts.

Should system of deferred publication for design patent applications be introduced?
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 24 April 2017

In 2015 the Taiwan Intellectual Property Office (TIPO) held a public hearing regarding whether and how to extend the term of design patents and introduce a system of deferred publication for design patent applications. TIPO plans to extend the term of a design patent to 15 years from the date of filing. It also plans to study whether the term extension should cover new design patent applications filed after the new law takes effect or all valid pending design patent applications as of the date of the new law.

Deposit of biological materials in relation to patent procedure
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 17 April 2017

Taiwan and Japan signed a memorandum of understanding regarding cooperation on the deposit of biological materials in relation to patent procedure. The purpose of the memorandum was to eliminate the need for patent applicants to make duplicate deposits in each country. To implement a framework for cooperation, the Taiwan Intellectual Property Office recently announced draft guidelines on Taiwan-Japan cooperation on the deposit of biological materials in relation to patent procedure.

Overview of divisional patent applications based on precedents in Taiwan
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 10 April 2017

Divisional patent applications can open up more options for patent strategy. In order to pursue patent protection in a more targeted and comprehensive manner, and to obtain a higher degree of protection, applicants should have a clear understanding of the optimal timeframe for filing a divisional application in addition to the extent of patent protection offered.

IP Court holds gifts constitute trademark use
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 03 April 2017

The IP Court recently held that gifts could be seen as trademark use in two non-use revocation administrative cases against VALENTINO trademarks. The IP Court pointed out that since the gifts were given to promote the VALENTINO-trademarked goods, such gifts were capable of being recognised by relevant consumers as a trademark and may therefore be accepted as trademark use. The IP Court's new opinions will affect the results of other similar cases involving trademark use.

Examination Guidelines on Trademarks Contrary to Public Order or Good Morals
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 27 March 2017

According to the Trademark Act, any trademark which is contrary to public policy or accepted principles of morality will not be granted registration. In order to clarify the definition and scope of the terms 'contrary to public policy' and 'accepted principles of morality', the Taiwan Intellectual Property Office stipulated that the Examination Guidelines on Trademarks Contrary to Public Order or Good Morals should be used as the reference for reviewing relevant issues.

Judicial Yuan and IP Court forum consensus on IP issues
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 20 March 2017

The Judicial Yuan and the IP Court recently held an IP forum. The forum discussed 12 proposed issues and reached a consensus on, among other things, damage claims against civil liabilities and whether the use of a registered trademark as a company name violates the Trademark Act. Although the consensus reached at the forum is not a precedent, public prosecutors and judges will consider it when examining specific issues.

Can fair use protect from infringement of right of paternity?
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 13 March 2017

The IP Court recently held that fair use does not necessarily protect an individual from infringement of the right of paternity. Instead, this depends on whether such action would have misled others into thinking that a work was by an anonymous author or another individual. However, the relationship between the fair use of a work and annotation of its origin and the right of paternity has yet to be resolved.

How can a work by an unknown author be used?
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 06 March 2017

The copyright of a work is vested in its author. If another person wishes to use that work, he or she must obtain the relevant rights or licence from the author. If during the lifespan of the work's copyright it becomes unclear who the author is, or if the author is dead and his or her successor is unclear as to who the original author was, how may a third party proceed to use the copyright?

Current search