With a particular focus on patent law, our next thought leader delves into the progress of IP legislation in Taiwan, over the last decade or so, touching on the most recent aspirations towards TTIP and the firm’s thought leadership in the sector.
Lawyer Monthly hears from Hsiu-Ru Chien, Partner at Lee and Li, who discusses some of the challenges Taiwan faces in the IP sphere, and how the latest legislative developments are changing litigation in the IP landscape.
Are there any issues patent legislation causes in the establishment of IP protection in the Taiwan?
On January 1st 2002, Taiwan joined the World Trade Organization (WTO) and is subject to the Agreement on Trade-Related Aspects of Intellectual Property Rights, which is one of the Annexes to the WTO Agreement.
On July 1st 2008, a specialized Intellectual Property Court (IP Court) was established, which governs civil cases related to patent infringement and administrative lawsuits related to patent validity. The civil tribunal in charge of patent enforcement actions shall review and make a decision on the patent validity issue if the defendant raises challenges therefor; however, the civil court's decision on the patent validity will only have binding effect between the concerned parties to the litigation. If the defendant wants to eventually invalidate the patent at dispute, he/she shall bring a cancellation action to the Intellectual Property Office (IPO).
On January 3rd 2014, the Legislative Yuan passed the amendment of the Patent Act, in which four new articles addressing "patent border protective measures" were added. As such, if a patentee suspects that imported items are infringing his/her patent right, he/she may, as with the Trademark Act and Copyright Act currently in effect in Taiwan, provide security bond to the Customs Administration for seizure of such items for the protection of his/her patent.
To gain ground on its aspiration for entry into the Trans-Pacific Partnership (TPP), the IPO submitted on May 10th 2016, to the Executive Yuan a TPP-related Patent Act amendment proposal (hereinafter referred to as ‘draft Amendment’), in accordance with the resolutions reached at the TPP/RCEP Special Working Group, and the Executive Yuan passed such amendment on August 4th 2016, which is now under review of the Legislative Yuan. In addition to expanding the "grace period" from six to 12 months, and introducing the ‘patent term adjustment’ mechanism to compensate for the patent office's delay in patent examination, the proposed amendment also provides the ‘patent linkage system’ – according to such, the owner of the new drug patent may file patent infringement litigation during the examination course of the generic drug application. If no such litigation is filed, the applicant for the generic approval may also institute a lawsuit to declare non-infringement (Article 60-1 of the draft Amendment).
Have there been any recent regulatory developments to affect your work with patents?
The Patent Act in Taiwan is amended frequently. For example, the Executive Yuan, Taiwan passed a draft amendment to the Patent Act on August 4th 2016. The main objective of this amendment is to coordinate Taiwan's legal system with TPP requirements.
This amendment to the Patent Act covers three key revisions:
- It extends the grace period to 12 months and sets out a more lenient requirement to disclosures;
- A prolonged examination caused by unreasonable patent office delays may result in a shorter period of time for patentees' exercise. After revision, patentees can apply for patent term adjustment if unreasonable delay is inflicted;
- In line with the introduction of the patent linkage system in the Pharmaceutical Affairs Act, the amended Patent Act's provision will be added to clarify the basis for patentees of new drugs to bring an infringement lawsuit to court during the process of generic drug marketing approval.
Thus, we must pay close attention to the dynamics of revisionism and provide the right message and information to our clients at all times.
What are the most common patent cases you encounter in your work and how do you navigate them?
The most common patent cases I encounter are patent enforcement and dispute resolution matters. In the cases I have dealt with, I have employed innovative techniques and strategies in, for instance, proving infringement of method patents, explaining technical issues in court, applying expert opinions, etc., and we obtained favorable results in such experience.
How do you work daily to expand your exploration of patents law and push the boundaries of your work?
Our firm restructured our resources and formed practice groups, which span the five departments of the firm, i.e., banking and capital markets, corporate and investment, trademark and copyright, patent and technology, and litigation and ADR.
In the patent practice group, in addition to its work for our clients, the group is active in government, educational, and professional endeavors, both at home and abroad, such as promulgation of and amendment to patent-related laws and regulations, participation in international patent organizations and patent/trade secret seminars, and contribution to the firm's bi-monthly bulletin as well as other publications abroad.
