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.
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.
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.
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.
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.
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.
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.
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).
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.
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 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.
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.
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.
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.
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.
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.