Lee and Li Attorneys at Law updates

Determining PHOSITA technical level when examining non-obviousness
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 27 August 2018

The Intellectual Property Court recently addressed the knowledge and technical level of a person having ordinary skill in the art (PHOSITA). In a decision which diverged from a Supreme Administrative Court judgment, the Intellectual Property Court declared that the examination of a PHOSITA's knowledge and technical level is considered substantial only when the parties raise a claim thereon and if such a determination would affect the judgment.

Outside statements used as exhibits for identifying ordinary skill
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 20 August 2018

In patent disputes, claim construction and a person having ordinary skill in the art determination often become the focus of the parties' arguments. Based on the principle of good faith and the doctrine of estoppel, it is common for one party to quote statements made by the other party outside the litigation proceedings as a basis for interpreting the claims or identifying ordinary skill. The Supreme Administrative Court recently assessed whether such statements may be used as evidence.

Determining adverse descriptions in technical evaluation reports
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 25 June 2018

Under the Patent Act, utility model patents are examined using a formality examination system; the Taiwan Intellectual Property Office is not required to perform a substantive examination of patentability. However, as patent rights are granted without substantive examination, to prevent patentees from IP rights abuse, the Patent Act stipulates that when exercising a utility model patent, the patentee must not issue a warning without presenting a technical evaluation report.

Slogans containing well-known marks not inherently distinctive
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 18 June 2018

Consumers will not usually perceive a slogan as an identifier of goods or services until they encounter consistent advertising or other practices by the brand user. Generally, therefore, slogans are not inherently distinctive in existing trademark examining practice in Taiwan. In a recent administrative case, an applicant claimed that because its house mark was extremely well-known worldwide, the Taiwan Intellectual Property Office should treat the trademark to be filed as a regular slogan.

Adding new invalidation reason in patent invalidation administrative proceedings based on same evidence
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 21 May 2018

To avoid repeated administrative litigation procedures, Article 33(1) of the Intellectual Property Case Adjudication Act stipulates that the IP Court must consider any new evidence submitted on the same invalidation reasons before the end of the oral debate proceedings. Since the act came into effect in 2008, this article has remained unquestioned. However, the IP Court loosely construed it in a recent judgment.

Proving infringement using patented manufacturing process
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 07 May 2018

A recent IP Court judgment has clarified the grounds for proving infringement using a patented manufacturing process. While the Patent Act provides for the shifting of the burden of proof, prospective owners of manufacturing process patents must consider whether an article made using a patented manufacturing process is unknown in or outside Taiwan before filing an application (or otherwise protect the invention using a product patent).

TIPO amends examination standards for patent term extension
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 16 April 2018

The Taiwan Intellectual Property Office (TIPO) recently announced amendments to Chapter 11, Part II of the Patent Examination Guidelines. Changes to the definition of 'first market approval' relax the criteria on determination of first market approval but also impose a limitation on the scope of extension to the specific ingredients stated in the market approval according to Article 56 of the Patent Act.

Robotic technologies and their patent portfolios
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 05 March 2018

In the new generation of robots, all kinds of process rely on the use of human intelligence. Therefore, a patent portfolio for inventions relating to robots with artificial intelligence should focus on the technical features of man-made inventions and creations and consider their various possible applications in order to obtain a reasonable scope of patent protection. Patent portfolio wars will significantly affect innovation, research and development of new robotic technologies.

Unauthorised barcode on genuine trademarked products is forgery under Criminal Code
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 19 February 2018

Unauthorised trademarks and barcodes are often used on counterfeit products. However, it remains an issue as to whether the unauthorised use of a barcode violates any laws or regulations. Recently, the Supreme Court and IP Court, among others, have been reviewing the relevant issues and believe that unauthorised use of barcodes should constitute forgery under the Criminal Code.

Do substantial differences exist in determination of equivalent infringement?
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 18 December 2017

Generally, technical features disclosed in a patent claim relating to mechanical or electrical engineering are more suitable for breakdown into basic comparison units that realise a certain function or deliver a certain result independently. Therefore, the triple-identity test is often used in these technical fields in determining equivalent infringement under the doctrine of equivalents. However, the Supreme Court recently held that it is insufficient to conclude patent infringement with a general triple-identity test.

Criteria for examining motivation to replicate invention of patent application
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 11 December 2017

When faced with the challenge of determining whether an invention patent specification has an inventive step when compared with the prior art, the courts must decide whether a person having ordinary skill in the art would be sufficiently motivated to combine the prior art references and replicate the invention. The criteria to make this determination was set out by the Patent Examination Guidelines 2013, and a recent IP Court decision serves as a useful model for this issue going forward.

Boundaries of fair use in news-related TV programmes
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 27 November 2017

In order to provide full reports on news events, it is often inevitable that the works of others will be used. Should relevant laws be unable to empower journalists to claim fair use under certain circumstances, news reports may fail to be conducive to the formation of public opinion or fail to agree with the main purpose of copyright protection. Exemption regulations concerning fair use in news reports can be found in the Copyright Act.

IP Court sets guideline determining jurisdiction over online trademark infringement
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 06 November 2017

The IP Court recently set a guideline in a criminal trademark infringement case determining jurisdiction over trademark infringement cases where the actual operator of an online store selling counterfeit goods is not physically located in Taiwan. The IP Court held that a district court in a certain city should have jurisdiction over trademark infringement cases when consumers who may have access to the online store are located in that city.

New inventive step examination guidelines
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 16 October 2017

The examination of inventive step is of paramount importance in examining patent applications. However, Taiwan Intellectual Property Office (TIPO) examiners tend to combine prior art references arbitrarily, which often results in findings based on hindsight. In order to prevent this practice and further enhance patent examination quality, TIPO has amended the inventive step examination guidelines.

Draft amendments to Trade Secrets Act
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 09 October 2017

The Taiwan Intellectual Property Office (TIPO) recently held a conference, inviting representatives from the industry, the Judicial Yuan, the Ministry of Justice, the National Police Agency of the Ministry of the Interior and the Ministry of Labour to discuss amendments to the Trade Secrets Act. TIPO will adjust relevant provisions based on the conclusions of the meeting and provide a revised version of the draft amendments for public discussion.

Supreme Court clarifies level of proof in trade secret protection cases
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 02 October 2017

The Supreme Court recently clarified the level of proof in trade secret protection cases. In order to implement trade secret protection fully, the Intellectual Property Case Adjudication Act lowers the burden of proof on owners and obliges the other party to make a specific defence. This interpretation will be valuable for trade secret owners citing and referring to prior judgments to protect their rights in future.

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.

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