Deep & Far Newsletter 2020 ©
Taiwan IP Updates
Licensing Musical Works and Royalties in Taiwan: Amendments to the Law
Some revisions have been made to the Regulations Governing Application for Approval of Compulsory License of Musical Works and Royalties for Use Thereof. Firstly, the identity of any exclusive licensee to the musical work concerned needs to be shown on the application form. If a musical work has been exclusively licensed, the exclusive licensee will have the right to submit an opinion about the matter as well as the scope thereof. Some wordings for certain provisions have been improved in order to strengthen procedural guarantees to exclusive licensees. These changes, which came into effect on August 4, have been made to clarify the rights of the copyright owner.
Confidentiality Order for Prosecutorial Investigation
As an amendment under the Trade Secrets Act, a confidentiality order for prosecutorial investigation system was introduced earlier this year. The aim is to strengthen protection of trade secrets by avoiding the possibility of a second leak of trade secrets during an investigation. It is expected that this will increase corporations’ willingness to file a lawsuit, and enable prosecutors to effectively conclude their investigations. With the new amendments, an unauthorized foreign juristic person may file a complaint, initiate a private prosecution or start a civil lawsuit. Overall, the intention is to boost business development and foreign investment by policies that can underpin foreign companies’ confidence in the legal protections available in Taiwan.
Patent Awareness in Taiwan – Joining Forces with Academia
This year, for the first time, TIPO has initiated a one-year exchange and cooperation program with the College of Design at the National Taiwan University of Technology (NTUT). The idea is to get lecturers and students to be more fully aware of the issues surrounding patent protection and IPR as it relates to the field of design. Class activities and discussions will involve patent examiners, industry experts, faculty members and students. From this, it is expected that a way forward for future design protection policies will be one of the results. Also, another hoped for outcome is that a new generation of talent with good interdisciplinary skills that can compete effectively in the design field will be nurtured.
TIPO offers six new services to be of assistance during the Covid-19 era
In order to assist various sectors of society during the difficult and challenging time both locally and internationally, TIPO have rolled out some new measures over the past few months. Partly, it is hoped that the path can be smoothed so that pandemic focused technologies can be found and also help industry focus on R&D. Firstly, the National Mask Team have been busy expanding mask production capacity in recent months, and TIPO has been coordinating patent information on mask production machinery by analyzing any potential patent infringement disputes. TIPO has also added a new pandemic prevention section to the Global Patent Search System (GPSS). Items are divided into 14 categories such as masks, protective clothing, test kits, vaccines and drugs. Registered members can benefit from automatically generated notifications showing the latest case in their chosen technical fields. While the search for a vaccine goes on, medical experts are also using an old drug new use approach to help stricken patients. TIPO has been providing the approval status and patent information for various drugs that have been gaining attention. This will help medical and pharmaceutical companies to develop various strategies, whether it is negotiating licensing agreements or designing around existing patents. A hotline has been set up to help applicants in the field of PPE conduct trademark searches and provide information on the likelihood of a successful application. This will help speed up the process of application and reduce costs. Another service being offered is that TIPO will allow trademark applicants to apply for reinstatement if they cannot comply with statutory deadlines due to the pandemic. Such procedures as certificate fee, annuity payments, and substantive examination and re-examination that are behind schedule will be dealt with leniently TIPO said upon receipt of the relevant documents. Finally, TIPO wishes to remind applicants that there is a hotline providing patent and trademark consultation services for those working from home who would like to know more about the latest online application guidelines.
Reduction of Patent Annuities
If a patentee is a natural person, a school or a small or medium-sized enterprise (SME), it will be possible to file for a reduction of annuities with TIPO. Foreign patentees will be eligible as well. To claim SME status in Taiwan, an enterprise must have a paid-in capital of no more than NT100 million dollars or is an enterprise with fewer than 200 regular employees. The first through to the third annuities will be reduced by NT800 dollars. The fourth to the sixth annuities will be reduced by NT1200 dollars. The new definition of an SME was issued in June 2020 by the Ministry of Economic Affairs.