Taiwan Intellectual Property Office (TIPO) recently held public hearings on the bill of amendments of Patent Act and Trademark Act. In order to comply with international practices of major IP countries such as United States, Japan and Korea, there will be important changes in Taiwan IP system through the introduction of a Deliberative Review and a Dispute Review for examination mechanism procedures and the simplification of remedy procedures including abolishing the administrative Appeal and changing the administrative remedy proceedings for patent and trademark cases.
In order to handle patent and trademark applications by above new mechanisms, TIPO will set up an independent Review Deliberation Committee and Dispute Deliberation Committee for patent and trademark cases, respectively. Basically, a review case for deliberation will be examined by paper documents submitted, while a dispute case for deliberation will be conducted by oral proceedings. If the applicant or concerned party is dissatisfied with the decision by TIPO’s deliberation committee, a lawsuit could be filed with the Intellectual Property and Commercial Court (which will replace and take over the Intellectual Property Court, please refer to the following for details).
Patent Examination Mechanism
| Prevailing Patent Act | Proposed Patent Act Amendment | Remarks |
|---|---|---|
| Petition of Re-examination (to be filed within 2 months after a rejection decision is rendered on primary examination) | To be abolished. (Instead, a petition of deliberative review could be filed within 2 months after a rejection decision is rendered.) | As a preliminary examination process, the deliberative review will be first reviewed by the original Examiner, and if the reasons for deliberative review are acceptable, the Examiner may cancel the original decision made or allow a patent to be granted, otherwise it will be reviewed by the Deliberative Committee if the reasons are deemed groundless. |
| (nil) | Introduction of Deliberative Review and Deliberative Dispute examination mechanism | Deliberative Review is for a normal patent application after it was rejected, while Deliberative Dispute is applicable to a dispute case, for example, a patent invalidation. |
Trademark Examination Mechanism
| Prevailing Trademark Act | Proposed Trademark Act Amendment | Remarks |
|---|---|---|
| Notice of Opposition (to be filed within 3 months after a trademark application is allowed and published in Trademark Gazette) | To be abolished. (The prevailing invalidation against an absolute ground for trademark registration will be revised so that any person may file a petition of invalidation on this basis, as provided by the current opposition system.) | The substantive requirements for filing an opposition are generally the same as that of an invalidation. Therefore, instead of filing an opposition within the 3-month publication period before the registration of trademark, an invalidation can be filed against a registered trademark, normally within 5 years after registration. |
| (nil) | Introduction of Deliberative Review and Deliberative Dispute examination mechanism | Deliberative Review for a rejected application will be examined by the written documents submitted, whereas Deliberative Dispute is conducted, in principle, by an oral argument examination for a dispute case such as invalidation or cancellation. |
Common Remedy Mechanism for Patent and Trademark Matters
| Prevailing Remedy Proceedings | Proposed amendments of Patent Act and Trademark Act | Remarks |
|---|---|---|
| Petition of Appeal (to be filed with *MOEA against a dismissal or rejection decision by TIPO) | To be abolished. | If the applicant or concerned party is dissatisfied with TIPO’s review or dispute deliberation, a lawsuit can be filed directly, without filing an administrative appeal. |
| Administrative Suit (to be filed against the Appeal decision by *MOEA) | Petition of Review Deliberation Suit or Dispute Deliberation Suit, may be filed within 2 months after TIPO renders a decision on the review or dispute deliberation. | Under the current litigation system, either a patent/trademark applicant or TIPO may become a defendant. In the future, TIPO will become a defendant only for Review Deliberation Suit, while the concerned parties in dispute will be the plaintiff and defendant for Dispute Deliberation Suit. |
| *MOEA refers to the Ministry of Economic Affairs (the supervising authority of TIPO). | ||
Per the prevailing law, the above administrative suit for a patent or trademark case in Taiwan is handled by Intellectual Property Court (IP Court). The government now revised and passed the relevant law to establish an Intellectual Property and Commercial Court (IPC Court) on December 17, 2019. The IPC Court is expected to be operated within two years. Hence, the above proposed bill of amendments on Patent Act and Trademark Act, may take another one or two years to be completed and passed by Legislative Yuan, and finally become effective.
