A pitfall that is difficult to avoid when determining whether a patent is non-obvious is hindsight bias when comparing a patent with prior art. This is why the Taiwan Patent Examination Guidelines have introduced secondary considerations to determine the non-obviousness of a patent, including 'unexpected results', 'long-felt but unsolved needs', 'overcoming technical prejudice' and 'commercial success'.
In a recent case, the IP Court adopted a negative stance on the issue of whether the appearance design of drugs may be regarded as trade dress of goods or services and thus be subject to Article 22(1)(1) of the Fair Trade Act. The drugs involved in this case were prescription drugs that can be obtained only with a physician's prescription. It remains to be seen whether there is any difference in legal application with respect to non-prescription drugs.
Since the inception of laid-open patent applications, the Taiwan Intellectual Property Office (TIPO) has allowed any party to provide relevant materials to support rejections of subject patent applications before the examination decision is rendered. Having sustained the foregoing provision for several years, TIPO recently amended the rule by deleting the original restriction that supporting materials may be submitted only after a patent application is laid open.
In 2012 Taiwan and Japan signed a patent prosecution highway (PPH) programme to better facilitate patent cooperation. In 2014 the programme (known as the 'PPH MOTTAINAI') was amended to relax a restriction which meant that only search and examination results of the office of first filing were permissible as a reference for the office of second filing. On 1 May 2020 the PPH MOTTAINAI became permanently effective.
According to Article 30-1(13) of the Trademark Act, trademarks containing another person's portrait or well-known name, stage name, pseudonym or alternative name should be refused registration unless said person consents to the application. However, the definition of 'stage names' in Article 30-1(13) remains unclear under current practice. The IP Court recently expressed its view on this issue in an administrative litigation regarding trademark opposition.
In January 2020 the Intellectual Property Office announced draft amendments to the Copyright Act which aim to address the exploitation of copyrightable works in the era of digital convergence and cloud technology, the regulation of fair use, the reconciliation of rights and the perfection of copyright regulations. This article discusses the main points of the draft amendments.
Research and development (R&D) efforts for COVID-19 diagnosis and treatment methods are in full swing. To promote and protect the results of this R&D, the Taiwan Intellectual Property Office (TIPO) has verified the Taiwanese patent database by comparing it with the COVID-19-related clinical trials currently registered in the US clinical trial database. Further, TIPO has released current Taiwanese patent information regarding COVID-19-related clinical trial drugs for public reference.
In December 2019 the Legislative Yuan passed a third reading of amendments to the Trade Secrets Act, expressly stipulating that any unrecognised foreign juristic person may file a complaint for public prosecution, private prosecution or civil action pursuant to the Trade Secrets Act. In addition to solving inconsistencies in past judicial practice, the amendments establish the Protective Order in Criminal Investigation system.
In disputes relating to the ownership of patent rights, rights holders can petition for a pre-final enforcement order to preserve their rights before a judgment becomes final and irrevocable in addition to requesting the title transfer recordation of the disputed patent. However, in a recent Supreme Court ruling, it was explicitly stated that the pre-final enforcement of a patent transfer recordation was unnecessary and that the enforcement court will reject any such related petitions.
According to the Patent Examination Guidelines, in order to determine whether a patent application can be easily accomplished by persons ordinarily skilled in the art in view of the citations, it is necessary to consider whether there is motivation to combine multiple citations. Further, such motivation depends on whether the multiple citations are relevant or common in their technical contents.
In the ever-changing fashion industry, every signature handbag design represents the designer's endeavour and the brand's goodwill. However, whether a handbag design is protected under the Copyright Act remains controversial. In recent civil decisions, the IP Court has demonstrated how the Taiwanese courts approach this issue.
A patent's scope is defined by the language of the claim. Due to the polysemy of language, a term may have different meanings to different people. Divergent interpretations of a term can influence a claim's scope and affect the determination of infringement or patent validity. Therefore, disagreements and debates regarding claim constructions always exist in patent litigation. The Supreme Administrative Court ruled on this issue in a recent case involving the patent for an electronic payment system.
Before the amended Patent Act took effect on 1 November 2019, a request for post-allowance division could be filed within 30 days of receiving an allowance decision only if the parent invention application had been allowed at the first examination stage. Under the amended Patent Act, a request for division can be filed within three months of receiving an allowance decision irrespective of whether the parent invention application has been allowed at the first examination or re-examination stages.
The current Patent Act was amended on 18 January 2018 and took effect on 1 May 2018. Subsequently, in April 2019 the Legislative Yuan amended the act once again in order to relax some of the requirements – in particular, to reflect adjustments to international patent laws and practice and upgrade Taiwan's patent examination practice. The latest amendments took effect in November 2019. This article examines the major changes introduced by the amendments.
The Taiwan Intellectual Property Office recently announced a new measure to manage design patent application priority claims. Now, the examination of a design patent application priority claim will align with that of an invention patent application – namely, the priority claim will not be substantively examined first. Thus, applicants can claim multiple priorities.
As Chinese (Mandarin) is Taiwan's national language, many foreign companies use Chinese translations or transliterations of their foreign brands (trademarks) in order to expand into the Taiwanese market. However, as Chinese characters can have different pronunciations and meanings, there are often multiple ways of translating or transliterating foreign trademarks into Chinese. The Intellectual Property Court recently addressed this issue in an administrative case relating to a trademark opposition.
The Supreme Administrative Court recently considered whether a patent lacked an inventive step due to teaching away. The disputed patent had been challenged before the Intellectual Property Office, which had rejected the appellee's invalidation action. Under Taiwan's patent examination guidelines, when determining whether a patent has an inventive step, all of the content disclosed in the prior art must be considered, including any prior art that teaches away from the applied-for invention.
The Taipei District Court recently upheld the established case law on companies' use of competitors' trademarks in keyword advertising. In general, the courts deem the use of a trademark non-actionable if it does not appear in the actual ad (ie, someone using the search terms would not assume that the ad belongs to the trademark owner). However, even if a competitor's trademark is not used in a company's ad, its use in keyword advertising might be considered a violation of the Fair Trade Act.
The Taiwan Food and Drug Administration recently published a draft version of the new regulations on patent linkage for public comment. An analysis of the regulations, which set out how patent linkage will be implemented in Taiwan, reveals several aspects that will have a significant impact on patent linkage operations in the region.
In a recent administrative litigation case regarding a trademark opposition, the Supreme Administrative Court expressed an important view on the adoption of the anti-squatting clause. Compared with previous decisions, the court took a stricter approach to the interpretation of earlier trademark use. Claimants asserting unregistered rights under this clause must demonstrate that the unregistered earlier mark was used in the ordinary course of trade and in accordance with common transaction practices.