Recent Development of Intellectual Property Protection in Taiwan

I. INTRODUCTION
In 2007, the Taiwan Government promulgated three important laws relating to the protection of intellectual property, namely the “Intellectual Property Court Organic Act” and the “Intellectual Property Case Act”, as well as the long-waited “Patent Attorneys Act”. Per the introduction of the afore-mentioned two new acts, the Intellectual Property Court will commence operation on July 1, 2008; and as for the enactment of the new Patent Attorney Act, this will be the first law in Taiwan which directly governs the qualification and professional discipline of patent attorney.

II. INTELLECTUAL PROPERTY COURT
To expedite and improve the quality of court judgments on intellectual property related cases, a special intellectual property court (IP Court), being a high court, is to be established on July 1, 2008.

The IP Court will have jurisdiction over civil related IP cases in the 1st and 2nd instances (civil related IP cases in the 3rd instance will fall within the jurisdiction of the Supreme Court), and criminal related IP cases in the 2nd instance (the 1st instance falls within the jurisdiction of District Court; whereas the 3rd instance within the Supreme Court), as well as administrative IP litigation cases in the 1st instance (the 2nd and/or final instance will be judged by the Administrative Supreme Court).

According to the “Intellectual Property Court Organic Act”, the newly established IP Court will be staffed with technical examiners to assist the judges in their examinations on patent-related cases. Moreover according to the “Intellectual Property Case Act”, the IP Court will decide on the validity of a patent or trademark during the trial of an infringement case if a party concerned raises such an issue and it will not, unlike the current practice, suspend the infringement litigation pending on the final outcome to be decided by the Taiwan Intellectual Property Office (TIPO).

The above new act will also provide protection over trade secrets which may be disclosed during the proceeding. Also a party concerned may file for an order to prevent its trade secret from being disclosed to third parties, or for using the trade secrets for the purpose other than said proceeding. Further, a new evidence introduced before the conclusion of the oral hearings shall be admitted

＊ Kingson Lai, Advisor of the Taiwan Sporting Goods Manufacturers Association, Advisor of Asian Patent Attorneys Association, and Managing Partner of Union Patent Service Center in Taipei, Taiwan.

by the IP Court. It is anticipated that once the operation of the IP Court is in order, protection of intellectual property rights will enter a new era.

III. THE PATENT ATTORNEYS ACT
The Patent Attorney Act was promulgated by the Taiwan government on July 11, 2007, and will come into effect on January 11, 2008. This new act will replace the former administrative order of “Regulation Governing Patent Agents”, promulgated in 2003.

The new Act regulates mainly that all patent attorneys must pass the national examination, then before practicing, each must receive pre-job training and join compulsorily the patent attorneys association. For those who were qualified to prosecute patent applications according to the old Administrative Order, they may continue to handle their works, but if they wish, they may also qualify to become patent attorneys under the new Act if certain criteria such as having been in the profession for a certain number of years, and having taken certain required training courses, etc., are fulfilled.

IV. NEW PATENT PRACTICE

1. Starting from January 1, 2007, Taiwan Intellectual Property Office (TIPO) in its Office Action or Notice of Allowance is to attach a search report containing a list of prior arts which were used by the Examiner in its decision on the patent application. This measure meets the international practice and is welcomed by all applicants and agents.
2. TIPO, commencing August 2007, before issuing any technical verification report of a utility model on the basis of lacking novelty or inventive step requirements, will give the utility model applicant a chance to state its comments or defense.
3. TIPO announced that starting from October 2007, it would admit foreign patent search report and examination result as reference material for use in examining the corresponding application filed in Taiwan. Accordingly foreign applicants are encouraged to submit their corresponding foreign patent search reports and/or notice of allowance, in particular those in USA, Japan or Europe, to TIPO, if available.
4. Starting from December 26, 2007, the period for responding to an official action in a patent or design application filed by a foreign applicant is extended from the original 60 days to 90 days; and if necessary, a further extension of term may be obtained and the maximum length to file a response may be within 180 days. Such measure, being long sought by foreign applicants, is much favored.

V. NEW TRADEMARK REGULATION AND LAW

1. On July 25, 2007 TIPO promulgated the “Examination Standards for Certification Mark, Collective Trademark and Collective Membership Mark”. Said Standards cover rules concerning the registration and examination for the afore-mentioned marks, and particularly provides protection for famous geographical indication in order to meet with TRIP’s regulations. On the same day, TIPO also abolished its previous “Operational Directions for Geographical Indication Certification Mark Registration”.
2. On November 9, 2007, TIPO promulgated the “Examination Standards for Well-Known Trademark Protection per Article 23 (1) -12 of Trademark Act”, and simultaneously on the same day, it also abolished the previous “Main Points for Determining a Well-Known Trademark or Mark”. TIPO in order to implement said policy, held two public hearings to collect public opinion, and finally, it also posted the revised draft on its official website for suggestions before the finalized version was put into force.
3. Draft of Amended Trademark Act

In order to harmonize with the international trend and to cope with the establishment of IP court, TIPO has prepared a new draft to amend the prevailing Trademark Act. The draft was posted November 30, 2007 on its website for public opinions, and also a public hearing will be held in a proper time.

VI. COPYRIGHT ACT AMENDMENT
To stop the dispute between P2P platform service providers and the copyright holders, Article 87, Para. 7 was incorporated into the current Copyright Act and promulgated on July 11, 2007. This new provision stipulated the following: “Any person shall not, without the consent of or a license from the economic right holder, provide to the public computer programs or other technology that can be used to publicly transmit or reproduce works, with the intent to allow the public to infringe economic rights by means of the internet of the works of another person, and to receive benefit therefrom”. Offenders of this provision may be sentenced up to two years imprisonment or detention or in lieu thereof or in addition thereto, a fine of not more than five hundred thousand NTD (about USD15600). This amended Act was promulgated and came into effect as from July 2007.

VII. STATISTICS

1. Number of Trademark Applications Filed in 2007

2. Number of Patent Applications Filed in 2007