COUNTRY REPORT: TAIWAN
ALL CHANGE IN TAIPEI
Introduction supplied by Tsai, Lee & Chen Patent Attorneys & Attorneys at Law
The Taiwan Intellectual Property Office (TIPO) released an initiative to amend the Patent Act just two days before 2020 ended. A draft amendment to the Trademark Act also appeared, less than ten days later.
In reference to models from the US, Japan, Germany, etc, the two amendments involve an overhaul by introducing a new legal framework for patent and trademark remedies plus a series of complementary regulations.
In 2020, Taiwan also partially revised the chapter of Design in the Patent Examination Guidelines. The revision was effective as of November 1, 2020.
Among many revisions, the most impactful amendment dealt with the patentability of buildings and interior designs as well as non-tangible image designs.
Here are the main points of the initiative to amend the Patent and Trademark Acts, as well as the already implemented provisions relating to design patents.
Establishment of new divisions within the TIPO
Modelled on some departments within the offices that make up the ‘IP5’ (in particular, the Patent Trial and Appeal Board and Trademark Trial and Appeal Board of the US Patent and Trademark Office; the Trial and Appeal Department of the Japan Patent Office; and the IP Trial and Appeal Board of the Korean IP Office) TIPO will have the new Patent Review and Dispute Adjudication Board and Trademark Review and Dispute Adjudication Board (PRDAB and TRDAB respectively; tentatively so named while the official title in English is not announced yet).
As the name suggests, the function of a patent review will primarily be to deal with the second reviews on the TIPO’s decisions of the first examination, patent term extension for pharmaceutical products and agricultural chemicals, post-grant amendment, and other applications and procedural matters. As for dispute adjudication it will be vested with jurisdiction over the decisions of patent invalidation and cancellation of patent term extension.
Similarly, as for TRDAB, the function of a trademark review will be the second review of the rejected trademark application after first examination as well as TIPO’s other decisions for trademark procedural matters such as invalid priority claims, assignment, transfer, pledge, extension, abandonment.
On the other hand, the TRDAB’s function for dispute adjudication includes invalidation and cancellation.
Followed by the organisational transformation, the current patent “re-examination” dealing with second review of the first examination will be abolished and be replaced by said new patent review procedure handled by PRDAB.
Procedural rules in the PRDAB and TRDAB
The PRDAB or the TRDAB will manage each case by a panel of three or five members and, tentatively, one of the panellists will preside and be served by a senior examiner or section chief.
There will also be new procedural measures such as oral debates, preparation stage, timely advice of interim opinion by the panel during a review, and pre-notification to close the review.
In both patent review and dispute cases, a third person whose interest in law is aligned with either party may either request or be ordered to participate as an intervener for aiding procedural challenges and defence.
The PRDAB’s decision concluding a proceeding also binds the intervener. An assignee in a patent review case or an exclusive licensee in a dispute case is by example such a third person who has aligned legal interest with a party in the proceeding.
Legal remedies beyond the TIPO
A party who does not satisfy with the decision made by the PRDAB/TRDAB may directly file a lawsuit to the Intellectual Property and Commercial Court (IPCC) which will be transformed from the IP Court on July 1, 2021. The current administrative appeal process in the Ministry of Economic Affairs will then be abolished.
Furthermore, a lawsuit against a PRDAB/TRDAB decision brought into the IPCC will be conducted in accordance with the code of civil procedural rather than rules for administrative litigation proceeding. Namely, administrative remedy is no longer available for patent and trademark related disputes.
Notably for trials in the IPCC, new evidence previously not submitted to the PRDAB/TRDAB cannot be presented to the IPCC. This rule enables the PRDAB/TRDAB to become a quasi-first instance trial and upholds the doctrines of equality of arms.
In both patent review and dispute cases, a third person whose interest in law is aligned with either party may either request or be ordered to participate.
Resolution for patent ownership disputes
Currently a dispute regarding who the real/lawful owner to a patent is can be resolved in two ways, either (1) resorting to invalidation by TIPO or (2) seeking civil litigation in the court.
As an intrinsic limitation over the power of an IP authority, it is rather difficult to find the facts of true ownership of an intangible right that shall be governed by civil laws in nature.
According to the draft amendment, invalidating a false owner’s right to a patent will no longer be available. Patent ownership disputes will be resolved only by the judicial courts in the future.
Removal of trademark opposition
Trademark opposition is one of the three currently available contentious proceedings (opposition, invalidation and cancellation) to challenge a registration.
The draft amendment will merge the two proceedings by leaving out opposition and allowing anyone to invalidate a trademark registration under the relative grounds of refusal.
Grace period of design extended
The exemption from loss of novelty and creativeness of a design application will be 12 months from any facts of in-tentional or unintentional disclosure, which is identical to the situation in the US, the EU, Japan, and Korea, as opposed to six months under the current patent law regime.
Design eligibility of macro-scale constructions
The acceptable design criteria are no longer limited to items that are small enough to hold in one’s hand, thanks to the revised version of the Patent Examination Guidelines (PEG).
The new PEG specifies that the article to which a design applies can be any article which can be produced through manufacture, including buildings, bridges, interior spaces or gardens, as well as anything which has been created via industrial or hand processes.
Protection for virtual designs
Under the new PEG the applicant will be entitled to a graphic image design patent for intangible matters. The previous version of the PEG defined a graphic image as a computer-generated icon or a graphical user interface (GUI) that transiently presents on a display device.
In addition to tangible IT devices, the new PEG introduces an intangible application such as a computer program product (CPP) to be the article to which a design necessarily resides. In other words, the new PEG confirms that a CPP is an industrially applicable product covered in the Patent Act.
Hence icons and GUIs are redefined as virtual images “presented or projected” from the display of electronic devices.
Candy KY Chen and Crystal J. Chen are partners at Tsai, Lee & Chen Patent Attorneys & Attorneys at Law. Kevin Feng is a patent associate. They can be contacted at: info@tsailee.com.tw
