Deep & Far Newsletter 2021 ©
Taiwan IP Updates
Taiwan Updates Examination Guidelines for Computer Software-Related Inventions
To be categorized as a computer software-related invention, the previous criteria was that an invention had a technical effect derived from a software or simply utilizing the computer. These two concepts will henceforth be removed and new related determination procedures and flowcharts similar to the system in Japan will be used. The guidelines will also have new sections to clarify rules about a person having ordinary skill, factors for denying an inventive step and factors for affirming an inventive step. It will be incumbent on the applicant to include in the specification the technical problems overcome when integrating software and hardware, the differences in hardware or software resulting from the adaptation, and the unanticipated technical effects resulting from such differences. The draft regulations have helpfully added example cases to the guidelines to help applicants in new emerging fields like artificial intelligence, block chain, big data, internet of things, and autonomous driving with the intention of encouraging more innovation in those fields.
U.S. Praises Taiwan for Trade Secret Protections
Taiwanˇ¦s efforts to protect trade secrets have been recognized by the Office of the U.S. Trade Representativeˇ¦s (USTR) annual Special 301 Report, which was released in May 2020. The new report reviews the global state of intellectual property protection and enforcement and is issued annually. The report cited a case involving three employees of a local semiconductor company who had stolen trade secrets from a U.S. company in an attempt to help a Chinese state-owned enterprise develop a computer chip. Because of the strengthened Trade Secrets Act, the culprits were convicted to a jail term and their firm received a large fine. In this case example, the American Institute in Taiwan, the de facto embassy in Taiwan, worked closely with the relevant law enforcement officers on the ground in Taiwan and their combined efforts made it possible to wrap up the case. A.I.T. has also worked closely with their local counterparts to share information on the protection of trade secrets and the prevention of digital piracy. Substantial cooperation between U.S. investigators and local prosecutors means Taiwan is a place where IP is respected.
TIPO Has Formally Implemented the Fast Track Examination Program
The Taiwan Intellectual Property Office formally implemented the Fast track Examination Program for trademark applications on May 1, 2021. One year ago, the program was begun on a trial basis. According to the data, up to the end of February, 2021, over 49,000 trademark applications, or roughly 60% of the trademark applications filed in this period were using the FTE program. Since this shows a high level of interest among applicants, it was decided to make the program permanent. For TIPO, the advantages are that it reduces the examination time and workload, and the applicants benefit by obtaining an earlier examination result. The latest numbers show that trademark applications using the FTE program are shortened by about 1.5 months compared to the standard system. To participate in the program, the application needs to be via the TIPO e-filing system, the mark must be a two-dimensional mark, all designated goods/services in the application are listed in the e-filing system, the application is linked to a pre-designated bank account for payment of government fees, and a signed Power of Attorney is submitted with the application.
Taiwan Amends Copyright Collective Management Organization Act
Amendments to the Copyright Collective Management Organization Act have been made to ensure a fairer and more effective licensing market. The draft law is now at the Legislative Yuan for further deliberation and is expected to be passed into law in due course. Firstly, there will be a public consultation mechanism before the establishment of any collective management organization. TIPO will send a notification to the public whenever a new CMO is in the process of being established so that interested parties will have a chance to have their say. This, in turn, will help TIPO decide whether to issue a CMO establishment permit or not. Also, a term limit for management will be in effect in order to prevent any possibility of a monopoly occurring. There will be various internal controls such as cash flow statements to ensure that the services of collective management are conducted appropriately. Finally, TIPO will have expanded guidance and supervisory and powers. TIPO will have the power to suspend or dismiss supervisors and directors and revoke permits if necessary.