1 January 2010CopyrightCrystal Chen and Candy Chen

Business brief 2010: Taiwan

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

Taiwan’s current Patent Act stipulates a first-to-file system.

aiwan is not a member of the Paris Convention; as such, only national protection is available. However, as a member of the WTO Agreement on TRIPS, applicants from the WTO member countries (except China) may enjoy the benefit of priority claim based on its original application in a member country.

A filing date may be obtained by submitting a specification in any language. A Chinese translation of the specification as well as the executed assignment, power of attorney and certified copy of priority document shall be submitted within four months, which may be further extended to six months, of the date of filing.

What are the costs of registering a patent, and what are the costs of defending it?

The cost of registering a patent generally ranges from $6,000 to $10,000. The translation fee is a major determining factor. In addition, the number of office actions issued by the Taiwan Intellectual Property Office (TIPO) will influence the final cost.

Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?

A serious mistake that results in the loss of priority rights is that companies assume that Taiwan is a member of the Patent Cooperation Treaty (PCT) and thus fail to file in Taiwan within 12 months of the original filing date.

The situation may worsen when the patent is laid open on the 18th month after its first filing. Companies that have filed a PCT application, but subsequently apply in Taiwan after the laidopen date occurs, lose the novelty to obtain their patent right in this jurisdiction.

In addition, Taiwan does not recognise priority dates claimed from a national Chinese application or an application filed in the name of a Chinese entity. The remedial solution is to file a PCT application in China, then claim the priority date and/or do so in the name of a non-Chinese entity in the subsequent Taiwanese application.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

The key threat to patent owners is contributory infringements.

Patent infringement can be categorised into direct infringement and indirect infringement. Direct infringement is the only circumstance in which the court usually finds a patent infringement. Indirect infringement includes active inducement and contributory infringement; however, due to lack of statutory support from the Patent Act, the courts in Taiwan do not recognise these types of infringement, except where inducement is clear.

It may be the best strategy to pursue contributory infringement under the ‘joint offender’ provision of tort under the general Civil Law. By adopting this strategy, the prerequisite condition is that there must be a direct offender that constitutes a direct infringer.

Although it is not necessary to sue the direct infringer, who is usually also the end customer of the patentee, it is likely that the courts will order the direct infringer to intervene; once the order is made, the judgment will be binding on the direct infringer, whether intervening or not.

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

Taiwan’s Trademark Act adopts the principle of registration protection. Whoever intends to use a mark to identify his goods or services should file a trademark application with TIPO to secure his trademark right. The owner of a registered trademark has the right to prevent others from using or registering the identical or similar mark on identical or similar goods and services.

Trademarks, certification marks, collective trademarks and collective marks are protected subject matter.

In addition to conventional trademarks, nonconventional trademarks such as single colour or colour-combination marks, sound marks and three-dimensional shapes are also registrable if they satisfy the distinctiveness requirement. The registration system also provides protection for geographical indications or geographical names.

What are the costs of registering a trademark, and what are the costs of defending it?

The cost of registering a trademark in one classification of goods or services ranges from $1,250 to $1,750, assuming there are no more than two uncomplicated office actions.

To defend a trademark right, the right holder may choose to file an opposition, invalidation or cancellation with TIPO, or to take litigation actions, such as civil and criminal actions. For an opposition, invalidation or cancellation proceeding, the minimum expense could be as low as $1,000 but might go up to $5,000, depending on how many briefs and counterbriefs are needed. Litigation costs start at $6,000 for a first instance proceeding at a district court.

What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?

The key threat to trademark owners in this jurisdiction is the import of counterfeits. Since most of the counterfeit products are manufactured outside this country, especially in mainland China, it is difficult to investigate the whereabouts of those responsible, which frequently leads to a non-actionable result because the potential defendants have no presence within the jurisdiction of Taiwan.

Since most infringing activities are conducted across the China-Taiwan border, the best strategy for dealing with infringement is to have lawyers in both jurisdictions who are prepared to co-ordinate during proceedings.

What are the most common mistakes trademark owners make?

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