Ms Hsiu-Ru Chien

Hsiu-Ru Chien

Updates

Intellectual Property

Is appearance design of drugs subject to protection under Fair Trade Act?
Taiwan | 31 August 2020

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.

Third-party observations can be submitted prior to laying open
Taiwan | 24 August 2020

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.

Taiwan-Japan PPH MOTTAINAI becomes permanently effective
Taiwan | 27 July 2020

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.

Provisional execution not required for patent transfer recordation
Taiwan | 02 March 2020

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

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

Border measures for IP rights protection in Taiwan
Taiwan | 21 January 2013

Awareness of IP rights protection has been rising in recent years. Rights holders and importers, exporters, manufacturers or sellers of various products should pay close attention to changes in customs border measures and institute appropriate internal guidelines for potential scenarios.

Deciding on claim amendment during patent infringement trials
Taiwan | 03 December 2012

Although the IP Case Adjudication Act grants civil courts the power to judge patent validity of their own accord, it is silent on how to handle the application of claim amendment. The IP Court has been inconsistent in its dealings with the application of patent claim amendment. An examination of recent IP Court judgments highlights several different approaches that it has taken in this area.

Toshiba wins first infringement lawsuit against DVD-ROM manufacturers
Taiwan | 29 October 2012

The IP Court recently ruled that DVD-ROM products produced by Abico FS Co Ltd infringed one of Toshiba Corporation's invention patents. The court ruled that Abico must not only pay Toshiba damages, but also refrain from manufacturing, offering for sale, selling, using or importing the infringing products. All infringing DVD-ROM products must be retrieved and destroyed.

Means-plus-function claim limitations: the 'definiteness' requirement
Taiwan | 28 May 2012

Taiwan's patent system allows for the use of means-plus-function or step-plus-function language for claim limitations. Infringers occasionally employ Article 18(8) of the enforcement rules to the Patent Act to argue that a patent should be invalidated for not conforming to the 'definiteness' requirement under Article 26(2) of the act. The IP Court and the Supreme Court recently considered this issue.

Improper injunctions: can third-instance attorneys' fees be included in damages?
Taiwan | 16 April 2012

The Code of Civil Procedure does not offer clear guidance as to whether attorneys' fees incurred in the appeal procedure should be considered part of the injury suffered. This issue was recently considered by the Supreme Court in Tai-Shang-1505. The court held that the attorneys' fees for the third-instance appeal could not be considered part of the damages caused by the preliminary injunction.

Patent Act to abandon principle whereby partially valid patents are not recognised
Taiwan | 19 March 2012

The draft amendments to the Patent Act are intended to reject the principle whereby partially valid patents are not recognised by the Taiwan Intellectual Property Office. Even though the amendments are yet to be implemented, it appears that the Supreme Administrative Court has already anticipated this development and adjusted its practice to reflect the pending change in the act.

IP Court's obligation to disclose opinions in cases involving patent validity
Taiwan | 07 November 2011

In its recent case law, the Supreme Court has articulated an important procedural requirement concerning the determination of patent validity by the IP Court. When the IP Court has a different view from the TIPO on the validity of a patent, it should either disclose its opinion to the parties and allow them the opportunity to present arguments, or alternatively, solicit the opinion of the TIPO by requiring its participation in the litigation.

IP Court reports on amendments to patent suit procedure
Taiwan | 14 March 2011

Following its seminar on trial models in March 2010, aiming to further improve trial quality and gain full trust in its judgments, the IP Court held another seminar on November 5 2010. In addition to eliciting comments and suggestions, the court reported a draft revision, which is currently under consideration. The court will seek further public feedback and conduct internal discussions before announcing a final version.