The current IP laws in Taiwan have generally met most of the international treaties and regulations. However it is still required to make some changes of these laws if Taiwan needs to join TPP which has requirements beyond WTO’s rules. To comply with the government policy for Taiwan’s accession to TPP, Taiwan Intellectual Property Office (TIPO) has published the draft of amendments on Patent Act, Trademark Act and Copyright Act which were submitted on May 10, 2016 to the Executive Yuan for review. These amendments are summarized as follows.
Patent Act
- The grace period for novelty of an invention patent application will be revised to 12 months from the current 6 months (this applies also to a utility model application but it is still unchanged for a design patent application). It is not required to make such novelty claim when the applicant files a patent application (including invention, utility model or design), and except for those published in the official gazette, it will apply to any disclosure made by the applicant.
- The provisions in connection with the above novelty grace period for the prior use right will also be revised simultaneously.
- The patent term could be extended to compensate the patentee due to the unreasonable delay of examination by the patent authority.
- With the introduction of the patent linkage system, the patentee of a new drug patent may initiate an infringement litigation against the generic drug applicant during his application for approval of the generic drug, and if said litigation is not initiated, the generic drug applicant may also file a suit to assert his non-infringement or the invalid of said new drug patent.
Trademark Act
- The current provision provides that it shall be deemed an infringement if a third party performs, without the consent of the trademark right owner, any act of manufacturing, possessing, displaying, displaying, selling, exporting or importing labels, tags, packaging containers or articles relating to services, and knows his act will likely to infringe the trademark right. However the restriction on such subjective criteria of “knowing” will be deleted in order to comply with the provisions of TPP on the criteria of ‘knowing, or with reasonable grounds to know”, when the infringer engages the activities of infringement.
- Criminal penalties will be imposed on counterfeiting trademark or collective trademark labels or packaging for the same commercial good or service; also, such criminal penalties will apply to the same infringement via the electronic medium or internet.
- Under the current provision, criminal penalties could be imposed on any person who counterfeits the labels of certificate trademark when he knows his act will likely constitute an infringement. It is similarly to the above that such subjective criteria of willfulness will be deleted so that the infringement will apply to circumstances whether the infringer has direct or indirect intention, and also to include the infringement made through the electronic medium or internet.
- The subject criteria of “knowing” for criminal penalties on infringement made by selling or intention of selling will be also deleted.
Copyright Act
- The basic calculation of the protection term will be extended from 50 to 70 years.
- Criminal penalties will be imposed on any person who acts for his profit or for its use in business to circumvent the anti-piracy measures on technological protection.
- In order to provide effective deterrence of piracy, any act involving the infringement of copyright under the digital environment, will be prosecuted ex officio without the complaint by a party.
- Protection will be extended to the encrypted program-carrying satellites and cable signals, and its contravention will be subject to civil and criminal penalties.
In addition, TIPO indicates that the above amendments may not be the finalized versions and could be further adjusted after reviewing by the Executive Yuan. In fact, not only the above amendments on IP laws, there are also amendments on Pharmaceutical Affairs Act, Plant Variety and Plant Seed Act, and Agro-Pesticide Management Act which are under the scope of TPP/IP Chapter, as well as amendments on others including Electronic Communications Act, Regulations for Cosmetic Hygiene Management, etc., to be in conformity with TPP provisions.
