Lee and Li Attorneys at Law

Taipei

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.

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Updates

Intellectual Property

TIPO introduces new measure to manage design patent application priority claims
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
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
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
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.

Important aspects of forthcoming patent linkage system regulations
Taiwan | 03 December 2018

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.

Supreme Administrative Court takes stricter approach to interpretation of earlier trademark use
Taiwan | 22 October 2018

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.

Supreme Court clarifies foreign clinical trial periods in patent term extension applications
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.

Non-traditional trademarks: IP Court clarifies requirements for determining criminal liability
Taiwan | 17 September 2018

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.

Determining PHOSITA technical level when examining non-obviousness
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
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
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
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
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
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
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
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
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?
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
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
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
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
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
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
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
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
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
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
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.

IP Office invalidates patent based on combination of evidence not presented by invalidation petitioner
Taiwan | 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?

Closest prior art in determining non-obviousness
Taiwan | 24 July 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.

Court rejects reverse confusion doctrine for granting junior trademark registration
Taiwan | 17 July 2017

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.

TIPO revises examination guidelines for post-grant patent amendments
Taiwan | 10 July 2017

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.

Revised customs recordation regulation will improve trademark protection
Taiwan | 19 June 2017

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.

Amendment of Patent Act – grace period for novelty and inventive step
Taiwan | 05 June 2017

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.

IP Court's view of patent contribution rate
Taiwan | 08 May 2017

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.

TIPO accepts applications for deferring substantive examination of invention patent applications
Taiwan | 01 May 2017

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.

Should system of deferred publication for design patent applications be introduced?
Taiwan | 24 April 2017

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.

Deposit of biological materials in relation to patent procedure
Taiwan | 17 April 2017

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.

Overview of divisional patent applications based on precedents in Taiwan
Taiwan | 10 April 2017

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.

IP Court holds gifts constitute trademark use
Taiwan | 03 April 2017

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.

Examination Guidelines on Trademarks Contrary to Public Order or Good Morals
Taiwan | 27 March 2017

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.

Judicial Yuan and IP Court forum consensus on IP issues
Taiwan | 20 March 2017

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.

Can fair use protect from infringement of right of paternity?
Taiwan | 13 March 2017

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.

How can a work by an unknown author be used?
Taiwan | 06 March 2017

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?

Declaratory judgment on non-infringement: another choice for an alleged infringer
Taiwan | 27 February 2017

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.

E-filing system for IP-related administrative litigation
Taiwan | 20 February 2017

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.

Court rules on defence of prior trademark use in good faith
Taiwan | 13 February 2017

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.

Post-grant amendment of utility model patents
Taiwan | 06 February 2017

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.

Court clarifies whether feature not disclosed by prior art is common knowledge in industry
Taiwan | 30 January 2017

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.

Supreme Administrative Court in favour of IP Court cancelling STOPGAP
Taiwan | 23 January 2017

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'.

Cancellation of patent right can serve as cause of retrial for binding infringement
Taiwan | 16 January 2017

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.

Issues relating to trade dress protection
Taiwan | 09 January 2017

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.

Refining determination of inventive step requirement
Taiwan | 19 December 2016

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.

Interpretation of functional features recited in patent claim
Taiwan | 12 December 2016

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.

IP Court's interim judgment rules against NAND flash makers for patent infringement
Taiwan | 05 December 2016

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.

Proposed amendment to Copyright Act would add stipulations to govern orphan works
Taiwan | 28 November 2016

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.

Supreme Administrative Court sets guideline for determining genericness
Taiwan | 21 November 2016

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.

Comparison of design patent and accused product should be based on design as whole
Taiwan | 14 November 2016

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.

Draft amendment to Design Patent Substantive Examination Guidelines announced
Taiwan | 07 November 2016

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.

IP Court grants application for preliminary injunction based on trade secrets protection
Taiwan | 31 October 2016

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.

Determining originality based on 'indirect contact'
Taiwan | 24 October 2016

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.

Copyright infringement issues concerning adaptations of computer software
Taiwan | 17 October 2016

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.

Perspectives on extension of patent duration
Taiwan | 10 October 2016

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.

Unregistered trademark exclusive licensee can file civil litigation against infringement
Taiwan | 26 September 2016

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.

Courts can discover secondary evidence not provided by invalidation petitioners
Taiwan | 19 September 2016

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.

Does post-grant amendment filing constitute amendment of statement of claims?
Taiwan | 12 September 2016

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.

Post-grant amendment of patent with invalidation action filed
Taiwan | 05 September 2016

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.

How to determine novelty by implicit disclosure in prior art reference
Taiwan | 29 August 2016

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.

IP Court accepts market survey to determine 3D trademark distinctiveness
Taiwan | 22 August 2016

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.

Wording and device of trademark may receive separate copyright treatment
Taiwan | 01 August 2016

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.

Trademark sole licence not equivalent to exclusive licence
Taiwan | 18 July 2016

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.

Tests for doctrine of equivalents in patent infringement assessment guidelines
Taiwan | 11 July 2016

The Taiwan Intellectual Property Office has published new patent infringement assessment guidelines which serve as a reference for courts in patent infringement cases. The guidelines introduce an insubstantial difference test and an interchangeability test. Rather than prescribing specific criteria as to which of the tests to adopt, the guidelines stipulate that the choice of test should be decided on a case-by-case basis.

TIPO patent publication postponement period extended to six months
Taiwan | 13 June 2016

The Taiwan Intellectual Property Office recently amended the Enforcement Rules of the Patent Act to extend the period of postponement for the publication of patents to six months. Patent applicants may need to postpone the publication of their patents when considering global patent deployment. However, from a public perspective, any postponement delays awareness of the patent's technical contents and may result in repetitive research and investment.

TIPO to amend guidelines on inventive step assessment
Taiwan | 16 May 2016

Examiners must often assess the inventive step of a claimed invention based on multiple references, and the Patent Examination Guidelines have resulted in many findings based on hindsight. To remedy this, the Taiwan Intellectual Property Office has proposed amendments to the guidelines, including a clear definition of the technical level of a person having ordinary skill in the art and principles for objective reasoning based on evidence.

Copyright infringement of circuit layouts
Taiwan | 25 April 2016

The IP Court recently delivered a judgment regarding copyright infringement of circuit layouts. The court held that in investigating whether the circuit layout of an actual product constitutes copyright infringement, the comparison method used for pictorial and graphical works should be employed to determine whether the defendant has reproduced the plaintiff's circuit diagram and layout.

What constitutes an invention produced in course of employment?
Taiwan | 28 March 2016

Concepts for inventions provided by a company may be insufficient to prove that an employee's research results are an invention produced in the course of their duties. In the event of doubt regarding rights ownership for research work conducted by an employee it is important to ask whether the work was carried out during the performance of the employee's duties and whether any agreements had been made between parties.

IP Court rulings on damages calculation method
Taiwan | 25 January 2016

Since amendments to the Patent Act came into effect in 2013, a number of IP Court decisions have shed light on the new method of calculating damages for patent infringement under the act. Three decisions have factored in the manufacturing costs proven by the infringer, while two others have specified that the court may adopt the net profit rate of the Ministry of Finance's industrial profits standards.

Tobacco and drug trademarks cannot sponsor television programmes
Taiwan | 21 December 2015

Although it is possible to promote products or services by using trademarks on television (TV) ads, companies are forbidden from sponsoring TV programmes and demonstrating their trademarks or trademarked products between the programming. However, alcohol products can sponsor TV programmes under certain restrictive conditions.

Who is the true inventor?
Taiwan | 26 October 2015

When a patent application is made fraudulently by another person who pretends to be the inventor, the court must determine the true inventor based on the facts. If the court finds the content of the invention as revealed in the evidence put forward by the individual claiming to be the inventor to be substantively identical or similar to the invention, it will deem the individual which offers such evidence to be the true inventor.

Can patent office conclude differently in application and cancellation action?
Taiwan | 05 October 2015

After a patent has been granted by the patent office, anyone who considers it to lack novelty or inventive step can file a cancellation action along with the relevant prior art references. Both the Supreme Administrative Court and the IP Court appear to accept that the patent office can adopt different opinions in a patent application and cancellation action.

Protecting confidentiality during preventive measures against infringers
Taiwan | 29 June 2015

Provisional attachment and evidence preservation are normally administered based on the confidentiality principle, to prevent the infringer from transferring assets or hiding important evidence beforehand. However, maintaining confidentiality can be complicated if the rights holder is forced to appeal a failed application for such preventive measures, as the appeal court will often be obliged to notify the infringer to appear in court.

Supreme Court rules on employee inventions
Taiwan | 16 March 2015

In the event of doubt with respect to the ownership of a patent resulting from research undertaken by an employee during his or her tenure, the Supreme Court recently considered the question of whether such research had been carried out "in the course of performing the employee's duties" and whether any special agreement had been concluded between the parties.

TIPO considers relaxing grace period regulations
Taiwan | 02 February 2015

The Taiwan Intellectual Property Office (TIPO) recently held a public consultation session on the rationale for the proposed relaxation of the grace period regulations. TIPO is inclined to extend the grace period and introduce more modes of non-prejudicial disclosure as exceptions to the destruction of novelty or inventive step, in the belief that this will promote innovation.

How are new deadlines calculated for office action reply extensions?
Taiwan | 15 December 2014

The Taiwan Intellectual Property Office (TIPO) designates a timeframe in which a reply to an office action for an invention patent or design patent case must be made. If the applicant cannot file a response within the designated period, it can apply to TIPO for a one-off extension. The extension length varies according to the applicant's nationality.

Well-known marks may be cited as supporting evidence for famous trademarks
Taiwan | 10 November 2014

The Trademark Act can prevent other parties from using famous marks as trademarks in Taiwan. While famous trademarks can be protected only if the marks are famous in Taiwan, this does not mean that evidence to prove that the mark is famous in Taiwan must originate in Taiwan. In specific disputes supporting evidence from around the world may be used to determine the famous status of a mark in Taiwan.

Estoppel applies to IP Court judgments
Taiwan | 06 October 2014

The Supreme Administrative Court recently revoked and remanded an original judgment of the IP Court because the remanded judgment gave a completely different interpretation of the characteristics and purposes of the disputed patent from those of previous judgments.

Legislative Yuan passes third reading of border measures for patent protection
Taiwan | 15 September 2014

The draft amendment of the Patent Act has been passed by the Legislative Yuan. This latest amendment adds four new articles which address patent border protective measures. In the future, if a patentee suspects that imported items are infringing its patent right, it can provide a security bond to Customs for the seizure of such items for the protection of its patent.

Patent licensing contract interpretation – parties' true intention
Taiwan | 04 August 2014

The Intellectual Property Court recently issued a ruling whereby the licensor was still entitled to royalty claims from the licensee pursuant to the original contract, even after the early termination of the licence. Whether during the contract negotiation process the contracting parties actively express or passively fail to express their intentions may play a critical role in a later interpretation of the contract's terms.

Adjustment of national health insurance reimbursement prices and patent rights
Taiwan | 30 June 2014

The National Health Insurance Act stipulates whether a drug has a patent and, if so, how long since that patent has expired as criteria for adjusting the drug's reimbursement price. Typically, a drug's reimbursement price is reduced after its patent has expired. Regardless of whether or for how long a drug's patent has expired, the reimbursement price should be reasonably adjusted based on prevailing market conditions.

IP court should designate how TIPO assists litigants
Taiwan | 27 May 2014

The Intellectual Property Case Adjudication Act stipulates that if a litigant (usually a defendant) claims patent invalidity during a litigation, the court can ask the Taiwan Intellectual Property Office to act as an intervention party to the litigation, in order for the latter to express its views on the validity of the patent.

Trademark distinctiveness varies with changes in social environment
Taiwan | 06 May 2014

In a 2013 administrative litigation judgment concerning trademark distinctiveness for a trademark registration application, the IP Court held that whether a trademark is descriptive of the designated goods is not immutable, but will vary with changes in social environment, consumer perception and status of actual use in the market.

Unauthorised trademark use in keyword advertising may violate Fair Trade Act
Taiwan | 17 March 2014

Whether using a third party's registered trademark in keyword advertising constitutes trademark infringement remains a controversial issue around the world. In a recent case, the IP Court held that unauthorised use of a trademark in keyword advertising might violate the Fair Trade Act if the website operator has no connection with that particular mark but tries to use it to increase traffic to its own website.

New Patent Act and enforcement rules
Taiwan | 27 January 2014

The new Patent Act took effect last year. To cope with the implementation of the amended act, its enforcement rules were also amended. The structure of the enforcement rules has been rearranged to include six chapters, including general provisions, patent rights and supplementary provisions.

New Patent Act – statutory periods from earliest priority date
Taiwan | 25 November 2013

The new Patent Act is regarded as the largest and most complicated amendment of the past decade – particularly regarding changes in patent prosecution procedures. The time periods for submitting the two supporting documents have been changed to "within 16 months after the earliest priority date", starting from "the earliest priority date". However, the claim of priority is not necessarily fixed.

Adjustment of patent official fees
Taiwan | 16 September 2013

Following the amendment of the Patent Act, the Regulations Governing Patent Official Fees was also amended. There have been major changes to, among other things, the fees for the re-examination of invention patent applications and the late payment of patent annuities.

Amendment of Trade Secret Protection Act
Taiwan | 19 August 2013

The first amendment to the Trade Secret Protection Act in 16 years recently entered into effect. Before the amendment there was no criminal liability prescribed in the act for trade secret misappropriation. However, through the amendment criminal liability will become available and attempts to commit crimes will be punished.

Indirect infringement of patent rights
Taiwan | 29 July 2013

The Patent Act stipulates that anyone who manufactures, offers to sell, sells, uses or imports patented goods will be liable for infringement. Theoretically, as long as a patent owner can prove that a direct infringer and direct infringing conduct exists, and that there is causation between the indirect infringer's contribution and the result of infringement, the accused indirect infringer will be held responsible for joint infringement.

Patent Examination Guidelines and patent regulations amended
Taiwan | 22 July 2013

​Following the amendment to the Patent Act and its Enforcement Rules the Intellectual Property Office (IPO) amended and published its Patent Examination Guidelines to guide the handling of patent-related applications. The IPO also amended other patent regulations, including regulations governing patent e-filing.

Does 'sell-back' does constitute trademark infringement?
Taiwan | 24 June 2013

'Sell-back' refers to the situation of the original equipment manufacturer, whereby products are manufactured and/or packaged in Taiwan but will not sold or circulated in Taiwan. Whether sell-back constitutes trademark infringement remains an unsettled issue. Some courts have stated that it does not constitute infringement against prior conflicting rights, while other courts have rendered judgments to the contrary.

No time limit for injunctions against trademark infringement
Taiwan | 08 April 2013

The owner of a registered trademark is entitled to demand that a third party which infringes or is likely to infringe its trademark rights must cease or prevent such infringement. With respect to the right to claim damages, the Trademark Act explicitly restricts the time limit in which such legal proceedings may be brought. However, there is no time limit for injunctions against trademark infringement.