Taiwan IP Updates
¡V December 2022
Taiwan¡¦s Judicial Yuan Announces Draft Amendment to the IP Case
Here are the highlights of what is likely to be the biggest overhaul of
the IP Case Adjudication Act since it was implemented in 2008:
The administrative remedy system for patent and trademark cases will
change from the current administrative litigation system to the
adversary system. If a party files an appeal with the court against a
Decision rendered by the IP Office, the case will be tried in accordance
with the civil procedure, and the defendant, depending on the nature of
the case, may not be the IP Office, but instead may be the opposing
party such as an invalidation petitioner, or the applicant of a
Civil disputes relating to patents, software copyrights, and trade
secrets will be mandatorily represented by lawyers. Unless the value of
the plaintiff¡¦s claim is low, that rule will be valid for other civil
In principle, the court should discuss with the involved parties via
their lawyers regarding the planning of a trial unless the case does not
require legal representation. In patent litigation cases, the judge
shall, in a timely and appropriate manner, disclose his or her
interpretation of any disputed terms recited in the claims, ex-officio
or upon the request of a party.
Currently, reports drafted by court experts formally known as Technical
Examination Officers (TEOs) are not disclosed to any parties. The
Amendment now makes it clear that when a judge deems it necessary, he or
she may disclose all or part of the content of the Reports drafted by
TEOs and the parties may be given a chance to debate the report¡¦s
In the event of an infringement of patent rights, software copyrights,
or trade secrets, if the plaintiff has made a prima facie showing of
infringement, the defendant should make a concrete defense and provide
the facts and evidence regarding his or her denial of infringement.
This will lessen the burden of proof resting entirely on the plaintiff.
To reduce the duplication of lawsuits, the Amendment now states that,
when an IP right exclusively licensed to a third party is undergoing
litigation, and such litigation has been initiated by the IP right
holder, the exclusive licensee shall be notified to ensure that he or
she has an opportunity to participate.
Concerning amendments, when the patentee/plaintiff has amended the
patent claims before the IP Office, he or she should make a report to
the court. Otherwise, the patentee can only claim his or her right
based on the claims prior to amendment.
New evidence may be submitted during the invalidation process if the
patentee has no objection providing that the new evidence is to
strengthen the very same legal grounds of the case.
The court may, upon request, designate a neutral technical expert to
carry out the verification task in evidence gathering proceedings. The
court can also publicly solicit, via its official website, written
comments from the public on specific legal issues of the case.
The IP and Commercial Court has exclusive jurisdiction over civil and
criminal lawsuits relating to trade secrets infringement. If the
criminal lawsuit relates to state level technologies, it should start
from the appellate instance IPC Court.
Victims are allowed to participate in the trial procedure according to
the provisions of the Criminal Procedure Law on victims¡¦ participation
11. Victims are allowed to participate in the trial procedure according
to the provisions of the Criminal Procedure Law on victims¡¦
participation in litigation.
Taiwan Invalidation Action Statistics
509 decisions on invalidation actions were made between January 2021 and
June 2022, 271 of which were against utility model patents, 178 were
against invention patents and 60 were against design patents. 60% of
the invalidation actions were filed by what is legally defined as
natural persons. Most of the patents against which invalidation actions
were filed are owned by local natural persons or legal entities. Two
thirds of the invention patents involved in invalidation actions are
owned by local natural persons or legal entities and one third is owned
by foreigners. Concerning the examination period for invalidation
actions for utility model patents, during the abovementioned time period
half of the decisions were arrived at within one year. The time period
needed for examining invalidation actions against invention patents was
within two years. The success rate of revocation of utility model
patents via invalidation actions was 60%.
Taiwan Revises the Examination Guidelines on Certification Marks,
Collective Membership Marks and Collective Trademarks
The Taiwan Intellectual Property Office has revised the abovementioned
examination guidelines to help businesses better understand the
Geographical Marks protected under the Trademark Act and subsequently
enhance the quality of patent examinations. The main highlights of the
changes, which took place on October 1, 2022, were as follows:
The name was revised to the Examination Guidelines on Certification
Marks, Collective Membership Marks, and Collective Trademarks in order
to reflect the sequence of the provisions.
A chapter on Geographical Marks was added to explain the registration
process in Taiwan for the application of a geographical certification
mark and geographical collective trademark.
Regarding the applicant¡¦s declaration of not owning a business that is
involved in the manufacturing or marketing of goods or services of the
kind being certified, the applicant will be forbidden from registering a
trademark in the same scope. Otherwise, the applicant will be
considered in violation of impartiality and the terms of the
When applying for a certification mark, the applicant is permitted to
list the overarching category in the name of the product or service
being certified. However, to ensure that the name clearly corresponds
to the conditions of use set forth in the regulations governing the use
of certification marks, as well as to facilitate applications for the
utilization of certification marks by any third parties, TIPO has
followed the international trend and requires that the names of products
and services abide by the NICE classification system.
5. The names of the products or services listed for products or services
being certified should match what is listed in the regulations governing
the use of the certified mark and the application and shall not extend
beyond the scope listed therein.
Trade Secrets Involving National Core Key Technologies to Be Protected
Under the National Security Act in Taiwan
The amended National Security Act has incorporated several provisions
that relate to the protection of trade secrets of national core key
technologies, increasing the severity of penalties for a convicted
offender. Also, the amendments stipulate that the Intellectual Property
and Commercial Court has jurisdiction over cases involving trade secrets
of national core key technologies and that the cases may be tried by a
professional tribunal or a dedicated division designated for such
purpose. Some of the most significant changes are as follows:
Any person obtaining trade secrets for the purpose of illicit gain for
him or herself or for a third person, or inflicting a loss on the holder
of a trade secret, by way of theft, embezzlement, fraud, duress,
unauthorized reproduction or without authorization, reproducing, using
or disclosing trade secrets or failing to delete, or conceal trade
secrets after the owner has ordered that the trade secrets must be
deleted shall be sentenced to a maximum of 5 years imprisonment and, in
addition, pay a fine between NT1 million and NT10 million.
Any person committing a crime as described in Point 1 above, for the
purpose of using trade secrets for personal gain or for a third person
in a foreign country, including China, Hong Kong and Macau shall be
sentenced to imprisonment between 1 year and 10 years and, in addition,
pay a fine between NT3 million and NT50 million.
Any person committing a crime as described in Point 1 above, and which
involves trade secrets of national core key technologies, for the
purpose of using such trade secrets for personal gain or for a third
person in a foreign country, including China, Hong Kong and Macau shall
be sentenced to imprisonment between 3 years and 10 years and, in
addition, pay a fine between NT5 million and NT50 million.
Any person engaging in the following acts mentioned in Point 1, and
which involves trade secrets of national core key technologies, for the
benefit of a foreign country, China, Hong Kong, Macau, or various
organizations established or substantially controlled by them shall be
sentenced to imprisonment between 5 years and 1