Patent laws in the region vary in their effectiveness. Regulations across jurisdictions to crack down on infringers are in a constant state of renewal and revision in order to stay ahead of those who steal intellectual property. Keeping the trolls at bay depends on staying abreast of regional developments in patent law
Taiwan is known for its beautiful scenery and strong semi-conductor technology. But you may not know that the Taiwan Intellectual Property Office (TIPO) is one of the top 10 patent offices in the world. In 2016, 72,000 patent cases were filed with the TIPO, more than the 66,000 cases in Germany, which makes Taiwan the sixth-largest patent office. In 2016, Lee and Li filed 6,400 patent cases for its clients in Taiwan, which is about 9% of the total national filing.
With 70 years of experience in prosecuting and litigating patents, Taiwan is now moving towards the following trends in latest patent practice.
First, the legal standard in judging the existence of an inventive step has always been challenging, not only in Taiwan but in other jurisdictions all over the world. Before the IP Court, patents held invalid by judges in patent infringement suits rose to 69% in 2010, but had dropped to 35% in 2016. This demonstrates that case law has tried to adjust the legal standard to be friendlier to patent holders. Effective from July 2017, the TIPO has started applying new patent examination guidelines with respect to the inventive step, which places more effort on trying to avoid hindsight. The IP Court’s case law and the TIPO’s practice have clearly shifted to becoming friendlier towards IP.
Second, patentees are entitled to do post-grant amendment to asserted claims in the middle of a court trial when facing tough prior art references submitted by defendants. Filing for a post-grant amendment has become an important strategy for patentees to fend off an invalidity attack. One of the best benefits in filing a post-grant amendment is that the trial will not be stayed. Judges keep trying cases on the basis of the current and proposed amended claims. Effective from January 2017, the TIPO has started using a new set of post-grant amendment examination guidelines, which provides significantly more flexible rules and standards in judging amendments. It is always the case that the easier the amendment is allowed before the TIPO, the better the chance plaintiffs have for winning at the IP Court.
Third, the third-edition patent infringement assessment guidelines issued by the TIPO took effect from January 2016. It is quite special in Taiwan that the TIPO has produced such guidelines for the reference of judges and industries. Although judges are not bound by them, the guidelines play a very important role in infringement assessment. We may even say it is the No. 1 document to take a look at for anyone who would like to understand the methodology of patent infringement analysis in Taiwan.
The guidelines cover both invention and design patent infringement assessment. Most of the updates in the third edition focus on the rules of performing claim construction and the doctrine of equivalences. You may consider it to be a “hornbook”, a primer generalizing the spirit of case law in a basic, straightforward manner. We perceive that the IP Court has changed its attitude and legal standard in analyzing patent infringements in accordance with the third edition guidelines in recent cases.
Fourth, to meet the need of patent applicants to quickly obtain a patent right, the TIPO has launched the PPH (patent prosecution highway) plan, and is now co-operating with patent offices in the US, Japan, Spain, Korea and Poland. Invention patent applicants are encouraged to take advantage of the favourable examination results in foreign countries to expedite the TIPO’s substantive examination. According to the TIPO’s statistics, 95.6% of the invention patent applications that applied via the PPH from July to December 2016 were allowed, and the average examination period was about six months.
In addition to invention patents, Taiwan introduced the “two-tier filing with successive patent rights” in June 2013, which means that a patent applicant can file an invention application and a utility model patent application (which is not subject to substantive examination) on the same day, and the invention patent right, which is generally granted later, succeeds to the utility model patent right, which is generally granted earlier. The two-tier filing is recommended for an applicant who needs to have a patent right as soon as possible to prevent others from entering the market too early, but also needs to obtain a substantially effective, strong patent in the long run via the patent office’s substantive examination.
As to the design patent, Taiwan has accepted “partial design”, “icon/GUI”, and “design for a set of articles” as legitimate subject matters since 2013, and such design applications are often allowed within one year. As computer or mobile device-related industries and businesses are important to Taiwan, but also extremely competitive, partial design helps the industries to quickly obtain exclusive protection for new-generation articles based on the design(s) of the previous generation(s). In addition, icon/GUI can be protected independently of the display or machine embodying it.
Taiwan is changing in many perspectives. In addition to its world-famous semiconductor and electronics industries, many traditional industries are also gravitating toward using and developing high-end technology, and may eventually play an important role in the world. The progress in patent practice described above shows the open mind and fairness of the government’s IP strategy, so the authors believe that the patent system in Taiwan is worth using, not only for local industries but also for foreign technology owners.
LEE AND LI Attorneys at Law
7/F, 201 Tun Hua N. Road
Taipei, Taiwan 10508, ROC