Latest updates

Main points of Copyright Act draft amendments
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 18 May 2020

In January 2020 the Intellectual Property Office announced draft amendments to the Copyright Act which aim to address the exploitation of copyrightable works in the era of digital convergence and cloud technology, the regulation of fair use, the reconciliation of rights and the perfection of copyright regulations. This article discusses the main points of the draft amendments.

TIPO releases patent information for COVID-19 clinical trial drugs
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 27 April 2020

Research and development (R&D) efforts for COVID-19 diagnosis and treatment methods are in full swing. To promote and protect the results of this R&D, the Taiwan Intellectual Property Office (TIPO) has verified the Taiwanese patent database by comparing it with the COVID-19-related clinical trials currently registered in the US clinical trial database. Further, TIPO has released current Taiwanese patent information regarding COVID-19-related clinical trial drugs for public reference.

New amendments to Trade Secrets Act
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 13 April 2020

In December 2019 the Legislative Yuan passed a third reading of amendments to the Trade Secrets Act, expressly stipulating that any unrecognised foreign juristic person may file a complaint for public prosecution, private prosecution or civil action pursuant to the Trade Secrets Act. In addition to solving inconsistencies in past judicial practice, the amendments establish the Protective Order in Criminal Investigation system.

Provisional execution not required for patent transfer recordation
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 02 March 2020

In disputes relating to the ownership of patent rights, rights holders can petition for a pre-final enforcement order to preserve their rights before a judgment becomes final and irrevocable in addition to requesting the title transfer recordation of the disputed patent. However, in a recent Supreme Court ruling, it was explicitly stated that the pre-final enforcement of a patent transfer recordation was unnecessary and that the enforcement court will reject any such related petitions.

International Patent Classification: one factor in determining whether motivation to combine multiple citations exists
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 24 February 2020

According to the Patent Examination Guidelines, in order to determine whether a patent application can be easily accomplished by persons ordinarily skilled in the art in view of the citations, it is necessary to consider whether there is motivation to combine multiple citations. Further, such motivation depends on whether the multiple citations are relevant or common in their technical contents.

Copyright protection and Fair Trade Act: handbag design issues
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 17 February 2020

In the ever-changing fashion industry, every signature handbag design represents the designer's endeavour and the brand's goodwill. However, whether a handbag design is protected under the Copyright Act remains controversial. In recent civil decisions, the IP Court has demonstrated how the Taiwanese courts approach this issue.

Broadest reasonable interpretation, presumption of validity and doctrine of claim differentiation
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 10 February 2020

A patent's scope is defined by the language of the claim. Due to the polysemy of language, a term may have different meanings to different people. Divergent interpretations of a term can influence a claim's scope and affect the determination of infringement or patent validity. Therefore, disagreements and debates regarding claim constructions always exist in patent litigation. The Supreme Administrative Court ruled on this issue in a recent case involving the patent for an electronic payment system.

Post-allowance division requirements under amended Patent Act
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 27 January 2020

Before the amended Patent Act took effect on 1 November 2019, a request for post-allowance division could be filed within 30 days of receiving an allowance decision only if the parent invention application had been allowed at the first examination stage. Under the amended Patent Act, a request for division can be filed within three months of receiving an allowance decision irrespective of whether the parent invention application has been allowed at the first examination or re-examination stages.

Patent Act amendments: a guide
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 23 December 2019

The current Patent Act was amended on 18 January 2018 and took effect on 1 May 2018. Subsequently, in April 2019 the Legislative Yuan amended the act once again in order to relax some of the requirements – in particular, to reflect adjustments to international patent laws and practice and upgrade Taiwan's patent examination practice. The latest amendments took effect in November 2019. This article examines the major changes introduced by the amendments.

TIPO introduces new measure to manage design patent application priority claims
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 23 September 2019

The Taiwan Intellectual Property Office recently announced a new measure to manage design patent application priority claims. Now, the examination of a design patent application priority claim will align with that of an invention patent application – namely, the priority claim will not be substantively examined first. Thus, applicants can claim multiple priorities.

Registering Chinese translations or transliterations of foreign trademarks
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 17 June 2019

As Chinese (Mandarin) is Taiwan's national language, many foreign companies use Chinese translations or transliterations of their foreign brands (trademarks) in order to expand into the Taiwanese market. However, as Chinese characters can have different pronunciations and meanings, there are often multiple ways of translating or transliterating foreign trademarks into Chinese. The Intellectual Property Court recently addressed this issue in an administrative case relating to a trademark opposition.

Supreme Administrative Court interprets teaching away requirements
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 15 April 2019

The Supreme Administrative Court recently considered whether a patent lacked an inventive step due to teaching away. The disputed patent had been challenged before the Intellectual Property Office, which had rejected the appellee's invalidation action. Under Taiwan's patent examination guidelines, when determining whether a patent has an inventive step, all of the content disclosed in the prior art must be considered, including any prior art that teaches away from the applied-for invention.

Use of competitor's trademark in keyword advertising deemed non-actionable
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 21 January 2019

The Taipei District Court recently upheld the established case law on companies' use of competitors' trademarks in keyword advertising. In general, the courts deem the use of a trademark non-actionable if it does not appear in the actual ad (ie, someone using the search terms would not assume that the ad belongs to the trademark owner). However, even if a competitor's trademark is not used in a company's ad, its use in keyword advertising might be considered a violation of the Fair Trade Act.

Supreme Court clarifies foreign clinical trial periods in patent term extension applications
Lee and Li Attorneys at Law
  • Intellectual Property
  • Taiwan
  • 08 October 2018

Departing from the opinion of the Intellectual Property Office, the Supreme Court recently held that the end date of foreign clinical trial periods in patent term extension applications should be the report date, not the study completion date. The court reasoned that the results of a clinical trial cannot be obtained immediately after the study is completed. Meaningful results can be obtained only after professional analysis and data processing.

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).