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.
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.
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.