Deep & Far Newsletter 2015 ©
Report of Some Practical Circumstances of Taiwan¡¦s Intellectual Property Right Protection Environment
Yu-Li Tsai, Patent Attorney
¡½ Bachelor of EE from National Taiwan University
¡½ Master of Telecommunications from National Taiwan University
¡½ IP Master from New Hampshire Law School (Franklin Pierce)
1. Taiwan is a major exporter of hi-tech industries, semiconductors and circuitry to name a few. Is the Taiwan government encouraging and/or promoting other industries to secure IPR, particularly on the patent side?
Taiwan government encourages and/or promotes technological industries to secure their IPRs. For example, the government provides NT$ 900 million dollars (about US$ 30 million dollars) subsidies and holds education training programs to enhance the deployment of high value patents, such as to deploy essential patents in the fields of information communication, computer software (network and electronic commerce), automobile industry, pharmaceuticals industry, green energy, biotechnology, etc.
Taiwan government also provides subsidies in respect of the patent derived from research projects. For example, it will subsidize any fee incurred from prosecuting a patent application or maintaining the patent after the patent application is granted.
Taiwan government adopts varieties of assistant measures to support public and private companies along with Cultural and Creative Industries, and to convert creative works and cultural and creative assets into actual production or application, where the Cultural and Creative Industries include:
(1) Visual art industry
(2) Music and performance art industry
(3) Cultural assets application and exhibition and performance facility industry
(4) Handicrafts industry
(5) Film industry
(6) Radio and television broadcast industry
(7) Publication industry
(8) Advertisement industry
(9) Product design industry
(10) Visual communication design industry
(11) Designer fashion industry
(12) Architecture design industry
(13) Digital content industry
(14) Creativity living industry
(15) Popular music and cultural content industry
To nurture cultural and creative enterprise talents, Taiwan government exploits and exercises the human resource of cultural creativities, integrates varieties of teaching and research resources, and encourages Cultural and Creative Industries to proceed with cooperation on research and talent cultivation among industries, government and academia.
The government may provide Cultural and Creative Industries with suitable assistances, rewards or subsidies in respect of:
(1) Creation or research and development of products or services.
(2) Circulation and application of intangible assets.
(3) Application of information technology.
(4) Participation in domestic and overseas competition.
(5) Protection and application of intellectual property rights.
2. In recent years there is a growing trend in intellectual property litigation. Is Taiwan following this trend and if so, how are intellectual property firms advising their clients on avoiding disputes?
(1) No. The IP litigations newly initiated before the IP court are gradually deceased in recent years, for example, there are 346, 325, 294 new civil cases in 2012, 2013 and 2014 respectively.
(2) To avoid disputes, the clients are suggested to:
A. Conduct a patent/trade mark search before conducting a business through the TIPO¡¦s free internet database.
B. Take note that after a patent has been granted, any person may request for an invalidation action at any time against the patent before the TIPO.
C. Design around the patent.
D. Note that any person may file opposition within three months after the publication date of a trademark registration.
E. Bear in mind that an interested party may file invalidation against a trademark registration.
F. Take care that any person may file revocation against a trademark registration.
G. Monitor the market to avoid infringing any IP right.
3. Many countries either have or are in the process of establishing an Intellectual Property Court, with qualified intellectual property judges. Does Taiwan have an IP Court, if so, by-and-large, are the judgments fair?
The IP Court was founded with a new system in 2008, and as such has not yet established a comprehensive library of jurisprudences. Most of the judges in the first instance at the IP Court are relatively young and have less practical experiences in the IP field, so their judgments or decisions often cannot be completely trusted or accepted by the parties, although they highly regard themselves quite a bit. Such situation similarly applies to attorneys having no technical background or patent prosecution experiences.
There have been several instances when the IP Courts¡¦ decisions were surprisingly disappointing, especially in the patent field, because the judges¡¦ findings on claim construction for invalidity or infringement were reckless and violated spirits behind the law or regulations. As a result, a few domestic enterprises have even refused to file patent applications in Taiwan.
However, in recent years, the IP court has begun to make some internal reforms of judging cases. The most important one is that the chief judge in a case will announce his/her evaluation of evidence and reasons for reaching such evaluation in respect of a specific issue (e.g. validity or infringement) to the parties after an oral argument session to this effect through an intermediate decision before handing down his/her final decision. This system will help the parties realize what the judge¡¦s current mental impression of the cases and the parties can have a chance to focus the issues and reinforce the arguments or evidences in respect of the specific issue before the final decision of the overall case. Therefore, the parties can get a focused chance for clarifying and debating whether the evaluation of evidence of a judge on the specific issue is justified. By this reform, it is believed the quality of the judgment can be somehow improved and the probability of surprising decisions may be decreased.
4. Several reasons have been put forward for the increase in intellectual property disputes, one being poorly drafted patent specifications. Do you think there are too many poor quality patents being granted?
Yes, there are too many poor quality patents being granted because most enterprises do not have proper knowledge of the importance of patents. For example, they might only want to spend lower cost to file a patent application without considering the quality, or could not be alerted timely that narrow claims can protect their products of the current version only although there are reduced fees in responding to office actions. Therefore, the patent agents or firms of the enterprises sometimes cannot help but scarifying the quality to keep profits under the limited budgets of the clients. Under such social environment, it is very hard to anticipate that the clients have strong patents, or the patent firms or attorneys can nurture the ability of drafting wonderful scope of the claims.
Accordingly, it will not be surprised to find that there are some patent firms which cannot provide competent services but offer extreme low price to attract clients only caring about the price of filing a patent. This may help explain that there are poor quality patents being granted.