Lee and Li Attorneys at Law
The history of Lee and Li can be traced back to the 1940s. The firm had around 20 employees at that time and focused mostly on transnational legal matters and intellectual property right issues. Lee and Li is the largest law firm in Taiwan thanks to decades of endeavors and foundations laid by our predecessors. With an abundance of expertise in all legal areas and the goal of providing a full range of services, the firm has been steadfast in its commitment to the quality of services to clients and the country. To sustain its tradition of excellence and build on the competitive edge for which the firm is renowned, in 2004, an initiative was made to streamline the firm's organization and management. On January 1, 2005, Dr. C. V. Chen was elected the Managing Partner and Chief Executive Officer, and Mr. Kwan-Tao Li was elected the Chief Counselor. In 2008, Dr. C. V. Chen continued to serve as the Managing Partner and Mr. Nigel N. T. Li was elected the Chief Executive Officer. Mr. Kwan-Tao Li retired on January 1, 2009 and was appointed the Chief Counselor. The number of Lee and Li's staff has increased since then. With expertise covering all professional areas and building on the foundations laid down over decades, the firm has been steadfast in its commitment to provide quality services to clients and the country.Show more
Disputes over patent ownership often arise between companies and research and development personnel. Such disputes can involve disagreement over whether an invention is a service invention and whether any specific agreements exist which govern patent ownership between the two parties. Opposing views have been presented regarding whether the fact that a company has paid for a patent application and annual patent fees can evidence that an invention is a service invention.
The Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademarks state that trademark owners must identify whether seized goods constitute infringement within 24 hours of the seizure, an obligation which often proves burdensome. In light of this, the Customs Administration of the Ministry of Finance recently proposed a draft amendment which offers an alternative to on-site determination of infringement: the use of accurate and reliable photo-taking technology.
The Taiwan Intellectual Property Office (TIPO) recently published draft amendments to 53 articles of the Trademark Act. Among other changes, the amendments introduce a new TIPO Appeal and Dispute Board, which will be responsible for deliberating on trademark remedy cases. This article summarises the main changes that the amendments introduce.
The Judicial Yuan recently published the IP Court's judgment in Taiwan's first patent linkage case. The IP court granted an injunction to prevent the manufacture of a generic drug which was found to have infringed a new drug's patent based on the doctrine of equivalents. The IP Court's watershed decision in this case will significantly affect both the patent linkage system and patent linkage litigation for years to come.
In 2018 the Taiwan-Japan Relations Association and the Japan-Taiwan Exchange Association signed a memorandum of understanding on the exchange of patent file wrappers to facilitate the sharing of file histories and other relevant information sought by applicants and patent examiners between Taiwan and Japan. The Taiwan Intellectual Property Office recently announced the pilot of a shared platform for accessing patent examination documents.
'Cybersquatting' is the bad-faith registration of a domain name that contains another party's trademark. Where an unauthorised domain name is registered in a Taiwanese generic top-level domain (ie, with a '.tw' domain name) under a contract with the Taiwan Network Information Centre (TWNIC), the affected party may be able to file a TWNIC Domain Name Dispute Resolution Policy proceeding, which is an efficient tool for preventing trademark infringement and cybersquatting.
The Taiwan Intellectual Property Office recently published draft amendments to certain articles of the Patent Act which substantially revise the litigation procedures for patent cases and consolidate the appeal levels. The amendments amount to the biggest change to the Patent Act in recent years. Patent owners and related professionals should pay close attention to the changes to the act and related laws and regulations to understand how their rights and interests may be affected.
Article 40 of the Plant Variety and Plant Seed Act provides legal remedies for plant variety rights holders or exclusive licensees whose rights have been infringed. The Taiwan Intellectual Property Court recently rendered a civil judgment that specifically indicates how to determine whether an allegedly infringing plant is an infringing variety.
With the development of technology, cameras and mobile phones now have various built-in shooting modes or parameters that enable photographers to shoot different scenes quickly. Traditionally, photographers would have had to adjust the parameters themselves. Notably, in two recent decisions the IP Court ruled that photographic works taken using built-in shooting modes or parameters can meet the Copyright Act's requirements for creativeness (originality).
A brand owner filed an invalidation action against the trademark 約克夏茶YORK SHIRETEA and a device mark in respect of services in Class 42 for a violation of the Trademark Act. After examination, the defendant (ie, the IP Office) cancelled the trademark's registration. Dissatisfied, the plaintiff filed an administrative appeal with the Ministry of Economic Affairs, which was dismissed. The plaintiff then filed an administrative suit with the IP Court.
TIPO holds similarity of trademarked goods not restricted by classification of goods or services in Trademark ActTaiwan | 08 February 2021
In the examination stage of trademark dispute cases, how to determine whether the goods or services are similar and the extent of their similarity are important issues. In a recent trademark opposition case, the Taiwan Intellectual Property Court (TIPO) clarified the definitions of 'similar goods' and 'similar services'. TIPO further expounded that the classification of goods or services in the Enforcement Rules of the Trademark Act is for the convenience of administrative management and search purposes.
In patent infringement disputes, when the patent at issue is compared with the accused infringing product, it is necessary to first confirm whether both components have the same technical features so as to confirm whether one is a literal reading of the other. In a recent case, the Taiwan Intellectual Property Court determined that the two components at issue did not constitute a literal reading and that the accused infringing product did not constitute patent infringement.
In 2019 the new Patent Act took effect, setting stricter time limits for parties to propose attack and defence methods in invalidation procedures to avoid delays in and improve the effectiveness of invalidation examinations. Following public confusion, the Taiwan Intellectual Property Office recently issued a Q&A on the examination practices of the Patent Act, to provide more detailed guidance on the interpretation and application of relevant provisions in specific cases. This article summarises the guidance.
The Taiwan Intellectual Property Office recently announced a patent examination pilot programme for start-ups, effective 1 January 2021. Under the programme, start-ups with research and development capabilities will experience a more active and positive examination process which will enable them to better improve their patent portfolios.
Patent Examination Guidelines amended – requirements for disclosure of specifications and drawings relaxedTaiwan | 21 December 2020
The Ministry of Economic Affairs recently announced an amendment to Volume 3 – Design Patent Substantive Examination of the Patent Examination Guidelines. On 1 November 2020 the amended version of the guidelines took effect. The amended guidelines provide applicants with a more flexible filing strategy and a more complete level of protection with regard to the appearance of their designs.
A pitfall that is difficult to avoid when determining whether a patent is non-obvious is hindsight bias when comparing a patent with prior art. This is why the Taiwan Patent Examination Guidelines have introduced secondary considerations to determine the non-obviousness of a patent, including 'unexpected results', 'long-felt but unsolved needs', 'overcoming technical prejudice' and 'commercial success'.
In a recent case, the IP Court adopted a negative stance on the issue of whether the appearance design of drugs may be regarded as trade dress of goods or services and thus be subject to Article 22(1)(1) of the Fair Trade Act. The drugs involved in this case were prescription drugs that can be obtained only with a physician's prescription. It remains to be seen whether there is any difference in legal application with respect to non-prescription drugs.
Since the inception of laid-open patent applications, the Taiwan Intellectual Property Office (TIPO) has allowed any party to provide relevant materials to support rejections of subject patent applications before the examination decision is rendered. Having sustained the foregoing provision for several years, TIPO recently amended the rule by deleting the original restriction that supporting materials may be submitted only after a patent application is laid open.
In 2012 Taiwan and Japan signed a patent prosecution highway (PPH) programme to better facilitate patent cooperation. In 2014 the programme (known as the 'PPH MOTTAINAI') was amended to relax a restriction which meant that only search and examination results of the office of first filing were permissible as a reference for the office of second filing. On 1 May 2020 the PPH MOTTAINAI became permanently effective.
According to Article 30-1(13) of the Trademark Act, trademarks containing another person's portrait or well-known name, stage name, pseudonym or alternative name should be refused registration unless said person consents to the application. However, the definition of 'stage names' in Article 30-1(13) remains unclear under current practice. The IP Court recently expressed its view on this issue in an administrative litigation regarding trademark opposition.
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.
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.
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.
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 existsTaiwan | 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.
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.
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.
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.
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.
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.
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.
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.
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.
The Taiwan Food and Drug Administration recently published a draft version of the new regulations on patent linkage for public comment. An analysis of the regulations, which set out how patent linkage will be implemented in Taiwan, reveals several aspects that will have a significant impact on patent linkage operations in the region.
In a recent administrative litigation case regarding a trademark opposition, the Supreme Administrative Court expressed an important view on the adoption of the anti-squatting clause. Compared with previous decisions, the court took a stricter approach to the interpretation of earlier trademark use. Claimants asserting unregistered rights under this clause must demonstrate that the unregistered earlier mark was used in the ordinary course of trade and in accordance with common transaction practices.
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.
Under Article 97 of the Trademark Act, maliciously selling and importing counterfeits is subject to criminal liability. However, defendants are liable only if they act with malicious intent to sell and import counterfeits – where no malicious intent is proved or where it is shown that the defendant simply acted recklessly, they will not be held liable. A recent IP Court decision has clarified the evidentiary requirements for determining criminal liability where the counterfeiting involves non-traditional trademarks.
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.
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.
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.
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 evidenceTaiwan | 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.
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).
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.
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 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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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 petitionerTaiwan | 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?
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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?
Although an alleged infringer can lodge a cancellation action with the Taiwan Intellectual Property Office (TIPO) to invalidate the patent at issue, it normally takes more than one year for the TIPO to conduct an examination. Meanwhile, the alleged infringer is unable to clear its name. In such cases, the alleged infringer may consider filing a lawsuit with the IP Court against the patent owner, asking the court to grant a declaratory judgment.
The Judicial Yuan has actively made plans for an e-filing system for litigation since 2014. After testing, adjustments and confirmation, the system was finally declared open in July 2015. As the e-filing system is the first of its kind to be used in Taiwan, cases accepted after its 2015 launch are limited to IP-related administrative litigation. Nevertheless, it is expected to be widely used and significantly improve efficiency of litigation work and reduce the production of paper documents.
According to the Trademark Act, any use of a trademark for the same or similar goods or services dated before the filing date of the registered trademark can be cited as defence of prior use in good faith and will not be subject to civil or criminal liability due to infringement of the registered mark. However, it is questionable whether use in foreign countries or areas outside Taiwan may also be cited as defence of prior use.
An application for a utility model patent need only pass a formality examination by the Taiwan Intellectual Property Office to be granted a patent certificate. This process offers the advantages of lower fees and expedited granting of a patent. However, when the patentee of a utility model patent that has not gone through substantive examination asserts infringement, the patent will be vulnerable and the patentee may need to to apply for post-grant amendment.
In a recent judgment, the IP Court voluntarily initiated an evidence investigation to review two prior art exhibits which were not submitted by the cancellation petitioner. The court concluded that the feature not disclosed by the prior art exhibits submitted by the cancellation petitioner was common knowledge in the art. The judgment affirmed the Taiwan Intellectual Property Office decision to revoke the patent at issue.
The Supreme Administrative Court recently upheld the IP Court's decision that the trademark STOPGAP should not be registered. The case was initiated by Gap (ITM) Inc against Huang Baicheng regarding the trademarks GAP and STOPGAP. Following an investigation, the STOPGAP registration was finally cancelled. The court held that the existence of trademarks similar to GAP may cause confusion due to the similarity between the words 'gap' and 'stopgap'.
An accused party which receives an unfavourable binding judgment can file for a retrial if the patent at issue is revoked through the cancellation action. In a recent case, the IP Court declined to investigate the defendant's patent invalidity arguments because such arguments had not been advanced until appeal. However, the IP Court's handling of the case was criticised by the Supreme Court and hence the accused party's filing for retrial was approved.
Trade dress may be protected mainly by design patents, trademarks and copyright. If trade dress does not conform to any of these, supplementary protection will be provided under the Fair Trade Act. The act stipulates that if an enterprise uses a commonly known symbol of goods or services, which is not a registered trademark, for the same or similar goods or services so as to cause confusion, the rights holder may bring a civil claim for damages.
A key factor in determining the validity of a patent is inventive step or non-obviousness. However, hindsight often occurs in court practice. To deal with this issue, several recent Supreme Administrative Court judgments have clearly stated that in order to prevent a ruling based on hindsight, courts should first determine the level that a person ordinarily skilled in the art could achieve and then make a decision based on such a hypothetical person.
Patent claims rely solely on text. However, it is difficult to define the scope of a patent right by describing an inventive concept or feature by text alone. It is not uncommon for a patent claim to involve function as well as structure, ingredients and movement. Appropriate interpretation of the scope of features defined by functional description has been a matter of longstanding controversy.
In a patent infringement lawsuit filed by Toshiba Corporation against four Taiwanese companies, the IP Court rendered an interim judgment holding that three NAND flash memory products manufactured and sold by the defendants had infringed Toshiba's patents. The IP Court also confirmed that Toshiba's patents should be valid. The court is in the process of determining damages.
The influx of new inventions following the internet tech boom has led to a corresponding increase in orphan works. As a result, many people are finding it increasingly difficult to comply with the Copyright Act, which requires the authorisation or consent of a copyright owner before the work may be used. To promote the circulation and use of works while maintaining fairness, the Taiwan Intellectual Property Office recently proposed an amendment to the act that would add rules to govern orphan works.
The Supreme Administrative Court recently set a guideline to determine whether a registered trademark has become a generic term. The Trademark Act is silent on the issue of how to determine whether a trademark has become a generic mark or term and thus lost its distinctiveness as a trademark. The court pointed out that once a trademark has been registered, the criteria to determine whether it has lost its distinctiveness and become a generic term should be strict.
The Supreme Court recently revoked the IP Court's second-instance decision on the basis that the conclusion of patent infringement had been affected by an incorrect interpretation of the accused product. The Supreme Court held that interpretation of the scope of the accused product (in this case, a motorbike) had been tainted by the fact that the patentee had removed the luggage basket before comparing the scope of the design patent and the accused product.
The Intellectual Property Office recently announced a proposed draft amendment to the Design Patent Substantive Examination Guidelines. A number of provisions are to be added to the guidelines, including a provision stipulating that an applicant can file a divisional application to cover the design that is disclosed in the as-filed specification or drawings, but not claimed in the patent application. The Intellectual Property Office is expected to initiate public hearings to discuss the proposal further.
The IP Court recently granted an application for a preliminary injunction order against an ex-employee to prohibit him from using or disclosing trade secrets that he had obtained during his employment. Compared to preliminary injunction order cases relating to other kinds of intellectual property, the court in this case relaxed the standards for the applicant to provide evidence regarding the requirements for a preliminary injunction order so as to give timely protection to the applicant's rights.
If a work is the creation of an author and not the result of plagiarism, it is deemed original and is entitled to protection regardless of whether it resembles the work of another person. In view of the legislative spirit of protecting copyright, it is justified for judicial practice to consider 'indirect contact' as a requirement for determining infringement. However, in determining the originality of a work, the question of whether the criteria of copyright infringement should be applied in kind remains up for discussion.
The IP Court recently considered whether copyrights were infringed due to adaptations of computer programs. The court determined that even where software code has been modified based on the work of others, if the modification and modified functions have resulted in a significant distinction from the original work, the modified work is considered an independent work and thus does not infringe the copyright of the preceding work.
Central authority approval is necessary for certain patents to ensure their safety and effectiveness. As a result, there is often a gap between a patent's approval and the launch of the product for sale. To compensate owners for time spent acquiring approval, an extension system was introduced under the Patent Act 1994. IP Court judgments have since provided clear explanations regarding the time spent acquiring approval, during which patent owners cannot make use of their inventions.
According to the Trademark Act, exclusive licensees can take legal action against trademark infringement. The act also stipulates that a licence cannot be cited against third parties unless it is duly registered in Taiwan. Due to the unclear definition of the legal effect of an unregistered licence under the act, whether the unregistered licensee really can file civil litigation or any other legal action against trademark infringement is controversial.
In administrative lawsuits regarding patent validity disputes, scholars often consider that the principle of disposition should be adopted and that the parties concerned should bear the burden of proof for their claims, since such disputes are private by nature and involve fewer pro bono characteristics. Under the Patent Act, the cancellation petitioner must present the cancellation reasons and evidence.
In practice, the IP Court allows patentees to apply for a post-grant amendment during the proceedings. If the post-grant amendment is deemed acceptable, the IP Court will decide on the patent validity and infringement issues based on the amended scope of the patent claim. However, there is some debate over whether an application for post-grant amendment after a patentee has filed a complaint constitutes an amendment of the statement of claim.
The Taiwan Intellectual Property Office (TIPO) embarked on an overhaul of its invalidation examination guidelines when the new Patent Act was implemented. The new law has made post-grant amendment of a patent with an invalidation action filed against it more complicated. As a result, TIPO has indicated that the amendment and later invalidation action will be consolidated and any decisions will be rendered jointly.
A recent Supreme Administrative Court has clarified that explicit disclosure in the citation document is not the only evidence that can be used to determine novelty of a claimed invention. Determination can also include the undefined but naturally inherited or existing content in the citation document. However, only when the implicit disclosure discloses the technical features of the invention at issue can it be determined that the patent at issue lacks novelty.
The IP Court recently took a market survey submitted by a trademark applicant into consideration when determining whether a three-dimensional (3D) trademark was distinctive enough for registration. After reviewing the credibility of market survey companies, survey methodology, the design of the questionnaires and the correlation between content and conclusion, the court held that the 3D trademark should be granted registration.
The IP Court recently held that not all forms of trademark representation should be protected by copyright. Copyright protection may apply to the device portion of the mark if appropriate, but the word portion is not subject to protection under the Copyright Act. In determining whether the representation of a trademark is entitled to copyright protection, the court appears to have adopted a principle of separate distinctions for different components.
The Trademark Act stipulates that an exclusive licensee is entitled to exclude the proprietor and any third party from using its registered trademark and that an exclusive licensee is entitled to bring infringement proceedings in its own name. Whether the so-called 'sole licence' is an 'exclusive licence' is a controversial issue.