Lee and Li Attorneys at Law updates

Adding new invalidation reason in patent invalidation administrative proceedings based on same evidence
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • May 21 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
  • May 07 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
  • April 16 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
  • March 05 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
  • February 19 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.

How to make a post-termination restrictive covenant for non-competition legally binding
Lee and Li Attorneys at Law
  • Employment & Benefits
  • Taiwan
  • December 20 2017

A post-termination restrictive covenant for non-competition restricts an employee from joining the employer's competitor or conducting business in competition with the employer following termination of employment. The employee is usually required to provide such a covenant on being hired, making it difficult for the employee to decline. As the legality of such a covenant was controversial, when the Labour Standards Act was revised in 2016, a new article was added to regulate it.

Do substantial differences exist in determination of equivalent infringement?
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • December 18 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
  • December 11 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
  • November 27 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
  • November 06 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
  • October 16 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
  • October 09 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.

Performance management and termination
Lee and Li Attorneys at Law
  • Employment & Benefits
  • Taiwan
  • October 04 2017

An employer may terminate an employment contract with notice or payment in lieu of notice and provide the appropriate severance payment if an employee is confirmed to be incompetent to perform the work assigned to him or her. However, employers may not terminate an employment contract if the employee is on maternity leave or suffering from an occupational injury or disease while working for the employer.

Supreme Court clarifies level of proof in trade secret protection cases
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • October 02 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
  • September 18 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
  • September 04 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
  • August 28 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
  • August 21 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
  • August 07 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
  • July 24 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.

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