Recent IP Legal Developments, IP Issue, IP Court Decision in Taiwan

Yu-Li Tsai, Patent Attorney

¡½ Bachelor of EE from National Taiwan University

¡½ Master from Telecommunications from National Taiwan University

¡½ IP Master from New Hampshire Law School (Franklin Pierce)

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1.      What were the most important legal developments in the last 12 months in IP law and how might they affect businesses?

The most important legal developments in the last 12 months in IP law include:

A.    TIPO amended the ¡§Measures for Deposit of Biological Materials in Relation to Patent Applications¡¨ and announced the ¡§Guidelines for Taiwan-Japan Cooperation on Deposit of Biological Materials in Relation to Patent Procedure¡¨. 

The amendments of the Measures mainly include that an applicant, in principle, cannot withdraw the deposited biological materials, but can exceptionally withdraw them before the depository issues the certificate of deposit.

In addition, following implementation of the Guidelines, patent applicants in Taiwan and Japan with biological material inventions can follow the relevant provisions to avoid making duplicate deposits of such materials in both Taiwan and Japan.

B.     TIPO amended ¡§Measures for the Implementation of Patent Electronic Filing and E-service¡¨.  The amendments of the Measures mainly include:

(1)   For a trademark electronic filing application, an applicant does not need to submit original priority documents or exhibition documents anymore.  The applicant can just state that the contents in the respective copies of those documents are identical to the original ones. 

(2)   For a patent electronic filing application, an applicant can submit supplementary files of the specification, claims, or drawings in .doc/.docx/.pdf/.jpg/.tif format with the officially formatted files of the original specification, claims, or drawings.  TIPO will accept amendments of the application based on the supplementary files if it finds any omission, distortion, or discrepancy in the officially formatted files during the examination.

(3)   After an applicant receives from the electronic filing system an automatic reply of a successful submission or payment, the applicant will be deemed as having made the submission or payment even though the file transmission may in fact fail for some reason.

2.      What are the main IP issues that foreign investors should bear in mind?

The IP Court was founded with a new system in 2008, and as such has not yet established a comprehensive library of jurisprudence.  Most of the judges in the first instance at the IP Court are relatively young and have less practical experience in the IP field, so their judgments or decisions often cannot be completely trusted or accepted by the parties, although they regard themselves highly quite a bit.  Such situation similarly applies to attorneys who have no technical background or patent prosecution experience.

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 the spirit 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 for 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 the evaluation with regard to 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 the judge¡¦s current mental impression of the case, and the parties then have a chance to focus on the issues and reinforce the arguments or evidence related to the specific issues before the final decision of the overall case.  Therefore, the parties can get a focused chance to clarify and debate whether the evaluation of evidence of a judge on the specific issue is justified.  Following this reform, it is believed the quality of the judgment can be somehow improved and the probability of surprising decisions may decrease.

3.      What have been the most important IP decisions that the courts have handed down in the last 12 months and what lessons do they hold for potential investors?

In the middle of 2014, the IP Court handed down a decision after an administrative litigation.  In this case, a patent was cited against a questioned patent, where the cited patent was filed before the questioned patent but published after the filing date of the questioned patent.   In this circumstance, the main issue of this case was whether the sole cited patent disclosed all the features of the inventions of the questioned patent and constitutes a simulated forfeiture of novelty for the questioned patent.   A more precise issue is whether a paragraph of the Chinese specification in the cited patent (hereinafter Par_CP) disclosed a specific feature in the questioned patent (hereinafter Feat_QP).

The participant (i.e., TIPO) argued that the English specification, which was filed with the application of the cited patent and disclosed Feat_QP, can be deemed as a part of the cited patent having a Chinese specification and can be used to explain any indefinite parts (e.g., Par_CP alleged by TIPO) of the cited patent in the Chinese text, so even if Par_CP in Chinese version in itself did not, it contents  or its equivalent should disclose Feat_QP based on its corresponding disclosures in the English specification. 

 However, the IP Court held that the contents of the cited patent should be entirely judged based on the Chinese specification rather than the English specification because all of the examined and allowed subject matter in the prior prosecution stage of the cited patent is proceeded in Chinese.  Moreover, the IP Court held that Par_CP in itself is neither indefinite nor unclear without the room for supplement or reference from either interior or exterior evidence, and so the participant¡¦s argument is baseless.

From this case, we can conclude that the IP Court¡¦s position is that although the English specification is a must for securing a filing date, a Chinese texts is the control one so that even if the control one is in lack of important contents in the corresponding English text, the corresponding text cannot be used to explain the contents of the control text or the invention involved in.

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