Deep & Far Newsletter 2023 ©
Taiwan IP Updates ”V May 2023
TIPO Issues Draft Amendments to Regulations Governing the Determination of Patent Term Extension
Draft amendments have been made to Articles 4 and 10 of the Regulations Governing the Determination of Patent Term Extension, the Taiwan Intellectual Property Office (TIPO) announced recently. Firstly, the amendment to Article 4, Paragraph 2 states that the specific patent agency may rely on documents that indicate the period of domestic and/or foreign clinical trials conducted for obtaining a marketing approval of a drug from the central competent authority in charge of the business as criteria for determining the extension of the patent term. The Specific Patent Agency does not need to send the documents to the central competent authority for confirmation. Another part of Article 4 states that during examination for marketing approval, the central competent authority in charge of the business shall confirm documents that indicate the period of domestic and/or foreign clinical trials and a data sheet for data exclusivity and domestic and/or foreign clinical trials submitted by an applicant. If there is any difference between the results confirmed by the central competent authority and the data sheet submitted by the applicant, the difference shall be corrected on the data sheet and approved by the central competent authority. Since the central competent authority has confirmed the period of domestic and/or foreign clinical trials conducted for obtaining a marketing approval, the specific patent agency can determine and calculate the period of domestic and/or foreign clinical trials based on the data sheet confirmed by the central competent authority. Hence the proviso ”„sent by the specific patent agency”¦ in the current regulation is deleted. This means, in effect, that the specific patent agency does not need to send the data sheet to the central competent authority for confirmation.
Taiwan Updates IPCAA
The Intellectual Property Case Adjudication Act has been updated as part of an ongoing plan to overhaul and clarify the regulatory functions to create a more efficient and up to date litigation system for the modern era. Some of the highlights are as follows:
1. The IP and Commercial Court will have jurisdiction over civil matters
of trade secret infringement unless both parties agree on another forum.
For general crimes related to trade secrets in the first instance,
including those supplemented with civil actions, will be handled by the
first instance court of the IPCC. Concerning crimes that undermine
significant trade secrets relating to national core technologies, the
trials will be under the jurisdiction of the second instance court of
the IPCC, which is the same level as a high court. Moreover, the
Supreme Court will establish a dedicated tribunal or division for
hearing a case that is under appeal.
TIPO Invites SMEs to Seminars on Increasing Patent Capacity and Value
The Taiwan Intellectual Property Office has recently offered seminars on Increasing Patent Capacity and Value for SMEs and academic institutions to become more familiar with patent affairs. The seminar invited TIPO patent examiners to teach courses on patent application, examination and patent searches. Depending on the different fields of expertise of the participating organizations, participants and instructors had the opportunity for further in depth discussions. The seminars have had a track record of over 90% overall satisfaction rate over the last five years. The statistics also show that in 2020, the number of invention patents filed by companies that participated in the seminars in 2019 increased by 47% compared with the previous year.
Taiwan Intellectual Property Act Passes Third Reading
Proposed amendments to the Intellectual Property and Commercial Court Organization Act passed their third reading on 11 April, 2023. According to the changes, all first appellate court trials on the alleged theft of technology considered critical to national security would be handled by the Intellectual Property and Commercial Court. Specifically, the court”¦s jurisdiction would extend to first trial cases for alleged contraventions of Article 13-1 of the Trade Secrets Act, as well as all related civil lawsuits, and second trial cases on alleged breaches of the Trade Secrets Act. Contravention of the acts in foreign territories, including China, Hong Kong or Macau, would be considered eligible for prosecution under the Intellectual Property and Commercial Court Organization Act, the amendments say. The proposed amendments are in line with amendments to Article 18 of the National Security Act, approved on June 18,2022, which considers trade secrets a part of national security. A previous amendment to the act on January 12, 2023, states that contravening an investigation confidentiality protective order would no longer observe the principle of no trial without complaint, and that offenders could face up to five years in prison and a fine of NT 3 million dollars due to the seriousness of the charge and the potential repercussions to national security.