Some IP Issues 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.      Can you outline the current intellectual property landscape with specific reference to the main regulators and key legislations that apply in your jurisdiction?

Answer: The main regulator for intellectual property regulations is the Taiwan Intellectual Property Office (TIPO) who is responsible for drafting and proposing any amendments of laws relevant to intellectual properties.  The intellectual property rights (IPRs) recognised and enforceable in Taiwan include patent rights (that are further categorized into invention, utility model and design), trademark rights, copyrights, rights of integrated circuit layout (¡§IC layout¡¨), rights of plant variety, and rights of trade secrets.

2.      Does the current intellectual property regulation sufficiently promote creativity or does it protect patent trolls and stifle innovation?

Answer: The intellectual property regulations in Taiwan cover all necessary IPRs protection, and have been enforced for many years with continuing evolution, so they theoretically can sufficiently promote creativity.   However, to protect IPRs, such as patents, we must consider some factors outside of regulations, such as (1) the budgets of the applicants or patentees; (2) the quality of the service providers who help in patent applications and prosecutions; (3) the competency of the lawyers in litigation, etc.  If an applicant does not have a sufficient budget, s/he will generally refuse to hire practitioners to draft a quality patent application.  Similarly, if the patentee does not have a sufficient budget, it is difficult to hire a lawyer to represent them in court.  In other words, since a patent troll has normally enough of a budget, it will have a good advantage in protecting its IPRs.

3.      What are the key differences among trade secrets, copyright, trademarks and patents?

Answer: 

Trade secrets can protect know how or an idea which is not publicly known and has economic value.  There is no expiration period for trade secrets as long as they are under proper security measures.

Patents can protect functional embodiments of an idea in a form of machines, method/process, manufacture, compositions of matter, and improvements in any of these items.  However, a patent cannot protect the idea per se.  There is an expiration period for patents.

Copyrights can protect original and creative expressions of an idea when fixed into a tangible medium of the expressions ¡V i.e., paintings, photographs, sculpture, writings, software, etc.   However, a copyright owner generally cannot interfere with an original work which was created by another who does not have any access to the copyrighted work even though the original work is similar to the copyrighted work.  There is generally an expiration period for the economic rights on a copyrighted work.

Trademarks can protect any symbol that indicates the source or origin of the goods or services to which it is affixed.  However, a trademark owner cannot prevent others from using a similar trademark which designates different goods/services unless the owner¡¦s trademark is famous.  There is an expiration period for a trademark but the period can be extended indefinitely by paying renewal fees to the TIPO.

4.      What are the different options available to obtain protection and can you outline the application process?

Answer: Regarding patent rights (including invention, utility model, and industrial design), rights of IC layout, and rights of plant variety, the registration process is compulsory, so application forms and fees are required to be submitted to the TIPO.  For invention and design patent applications, they also need to go through substantive examination aside from formal examination to justify their patentability before grant.  Regarding trademark rights, the registration process is not compulsory, but if one does not register his/her trademark, the trademark cannot be protected under the Trademark Act but is under the Fair Trade Act. A trademark   application also needs to go through substantive examination to determine whether it has distinctiveness and no likelihood of confusion or mistake. Regarding copyrights and rights of trade secrets, no registration process is available.

5.      How should a business respond if it is accused of infringing another party¡¦s intellectual property?

Answer: It can claim defenses such as: (1) the IPR is invalid or has expired; (2) non-infringement; (3) prosecution history estoppel; (4) prior art defense; (5) prior use rights; (6) fair use; (7) the right to claim infringement becomes extinguished because of laches; and (8) right exhaustion or first sale doctrine.

6.      What steps should be taken if it is believed that your intellectual property has been breached?

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