Intellectual Property, Taiwan updates

IP Court sets guideline determining jurisdiction over online trademark infringement
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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?
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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
Lee and Li Attorneys at Law
  • 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.

Current search

Refine search

Firm