Taiwan IP Updates

 By Lyndon 

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Taiwanˇ¦s Executive Yuan Passes Draft Amendments to the Copyright Act

In order to catch up with technological advances and any potential legal grey areas, the Taiwan Intellectual Property Office has recently drafted an amendment to the Copyright Act.  Here are some of the main changes:

1. To clarify what rights pertain to the technology people use, the term ˇĄpublic broadcastˇ¦ will now cover any linear broadcast (i.e. one that cannot be re-watched) regardless of whether it is transmitted via TV, radio, or the Internet and thus doing away with the distinction between ˇĄpublic broadcastingˇ¦ and ˇĄpublic transmissionˇ¦.
2. A provision has been added to broaden the scope of copyright liability to include simultaneous further communication to the public, such as when a retailer plays a copyrighted video in one of its stores.
3. To ensure fair use, an exemption has been granted for distance learning which means educators would be allowed to use copyrighted works other than textbooks without having to obtain prior authorization.  Also, criminal liability for unauthorized copyright use for nonprofit events would be waived.
4. Existing provisions on the compulsory licensing of works of unknown owner that are currently found in the Development of the Cultural and Creative Industries Act will be added to the Copyright Act.  This will make it easier to ensure the free circulation of culturally significant works.
5. Online ads touting pirated goods will henceforth be deemed an infringement of copyright.  In recent years, this has been increasing to the detriment of rights holders, so civil and criminal liability will be imposed.
6. Calculation of civil damages will be based on royalties.  Plaintiffs in copyright infringement case will have the option of having damages calculated on the basis of royalties owed to them.  This will possibly incentivize victims of infringement to pursue civil instead of criminal action.

It is likely that there will be some adjustments and more precise language inserted into the final form of these provisions after public consultations.  There is also the likelihood that abusers of the abovementioned acts may face criminal liability according to the law.

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Taiwanˇ¦s New Patent Ownership Dispute Resolution Mechanism

Amongst the numerous amendments to the Patent Act issued earlier this year, a new mechanism for resolving patent ownership disputes has been issued.  Previously, any dispute regarding the determination of the lawful owner of a patent could be resolved in two ways.  Firstly, by invalidation at the TIPO, and secondly, by seeking civil litigation via the courts.  However, it was felt that TIPO had an intrinsic limitation in its ability to investigate true ownership of an intangible right, whereas the courts were seen as better positioned to do such work.  The new regulations will no longer task TIPO to decide the validity of the ownership of a patent or cancel a patent held by an unlawful holder.  That duty will be resolved only by the courts in future.  Previously, if a wrongfully owned patent was invalidated by TIPO, it also meant that the true owner was entitled to reapply the same subject matter while keeping the original filing date.  It also meant that the true owner also had the opportunity to make modifications to the application if there was sufficient support from the original disclosure.  Now that ownership issues can only be resolved through the judicial system, no further changes can be made to the patent even when the true owner regains the rights to the patent.

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Taiwan Sets Up Committee for Review and Dispute Resolution for Trademark Applications

Under the Amendment of the Trademark Act, the Taiwan Intellectual Property Office has changed the examination processes relating to trademark applications and invalidation or cancellation actions by establishing a Committee.  Under the title, Committee for Review and Dispute Resolution, it will be tasked with conducting review and examination procedures.  TIPO will designate 3 members of the Committee to form a panel, one of whom will be appointed as the presiding panelist who will oversee and coordinate the proceedings.  The Committee will review the following types of cases:

1. Formally rejected trademark applications.
2. Formally dismissed trademark applications in respect of documents, designated goods and services or denied priority claims.
3. Other dismissed procedures, such as change or waiver of ownership, licensing, assignment, and pledge recordals and renewals.
4. Invalidation actions.
5. Cancellation actions.

Under the new system, appeal proceedings will be abolished.  If the applicant or other party is dissatisfied with a decision, he or she can directly file a civil litigation with the IP and Commercial Court to seek judicial review of the decision.  The court system for judicial review will be a two-instance system, but the litigation will shift from administrative to civil proceedings.  For cases such as invalidation or cancellation actions, the opposing party, not the IP office will be the defendant.  With this process, both parties can participate as plaintiff and defendant and express their opinions thoroughly.  The losing party may also appeal the case to the Supreme Court

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