Taiwan Support Station

Our firm has been involved in the representation of intellectual property rights in Taiwan for some time. We would like to provide a variety of higher quality services regarding the acquisition and exercise of intellectual property rights in Japan by Taiwanese people, and the acquisition and exercise of intellectual property rights in Taiwan by Japanese people. We have opened a room.

The "Taiwan Support Office" aims to serve as a bridge between Taiwan and Japan, support our customers, and seek a higher level of intellectual property protection. Regarding the acquisition of intellectual property rights between Japan and Taiwan, we provide a variety of services that will satisfy our customers by communicating effectively with reviewers and achieving the ideal acquisition of rights.

Additionally, since I am able to communicate and negotiate in Chinese (Mandarin) and the local Taiwanese language, I believe that this will be useful not only for patent applications but also for exercising intellectual property rights between Japan and Taiwan. I'm here.

If you have any questions regarding intellectual property rights in Taiwan, please feel free to contact us.

Taiwan Support Office Director Ryoko Yoshida

 

Type of patent

 In Taiwan, there are three types of patents (equivalent to patents): invention patents (invention patents), new type patents (utility models), and new style patents (designs), all of which are stipulated collectively in the Patent Law.
 An invention patent refers to a highly advanced creation of a technical idea that utilizes the laws of nature and can be used industrially.
 A utility model is a creation or improvement in the shape, structure, or combination of articles that can be used industrially.
 Furthermore, a design refers to the shape, pattern, color, or combination of these of an article, which is a creation that appeals to the sense of sight and can be used industrially.

 

Duration of patent right

Japan: 20 years for invention patents, 10 years for utility models, 20 years for designs
Taiwan: 20 years for invention patents, 10 years for utility models, 15 years for designs

 

Application publication system, substantive examination request system

 On October 26, 2002, the application publication system and substantive examination request system began in Taiwan.

 Application publication system

 Taiwan's application publication system applies only to invention patents and does not apply to utility models and industrial designs.
 An invention patent is automatically published one year and six months after the filing date (priority date in the case of a priority claim). It is also possible to publish earlier if desired.

 Substantive examination request system

 In the case of inventions, examination is conducted only when requesting substantive examination. Additionally, the period during which a request for substantive examination can be made is within three years from the date of filing the application. If a request for examination is not filed within three years from the filing date, the patent application will be deemed to have been withdrawn.
 On the other hand, there is no need to request substantive examination for designs, and examination is automatically conducted after filing.
 Above (1) and (2) are the same as in Japan.

 

Spontaneous correction possible period

Timing restrictions on amendments to applications

(1) From the time of application until the deadline for responding to the first notice of examination opinion or delivery of notice of decision to grant a patent
(2) Within the deadline for responding to the final notice of reasons (*1)
 *1 Voluntary amendments will be accepted only if any of the following apply.
 ・Deletion of patent claims
 ・Reduction of the scope of claims
 ・Correction of typos or mistranslations
 ・Explanation of unclear descriptions

 

 

trademark system

Application route

As it is a WTO member country, it is possible to claim priority based on Japanese trademark applications.
*Not a member of Madpro

 

Application language

Traditional Chinese)

 

Type of trademark

Characters, figures, symbols, colors, three-dimensional shapes, dynamics, holograms, sounds, etc., or combinations thereof
*Non-traditional trademarks such as location and smell are also protected.
*The defensive mark system and the associated trademark system were abolished due to the 1998 revision.
*Adopts one application multiple division system (also adopts division system for trademark application and division of trademark rights)

 

Protection target

General trademark (goods, services), certification mark, collective mark, collective trademark

 

Trademark classification

Adopts international classification. *Not a member of the Nice Agreement

 

Documents and information required for application

Required documents

・Copy of power of attorney
・[When claiming priority] A copy of the priority certificate (a Chinese translation must be submitted)
*No authentication/notarization required
*Can be submitted within three months from the application date

Necessary information

・Trademark sample
・Designated goods/designated services and their classifications
·applicant
・Whether there is a priority claim (partial priority claim, multiple priority claims possible)

 

Application publication

There is no application publication system.

 

Objection system

Any person may file an opposition within three months from the date of publication of the trademark registration (not including the date of publication).

*Before a decision on the opposition is made, the opponent may withdraw the opposition, but cannot file another opposition or request an invalidation trial regarding the same facts with the same evidence and reasons.
*No one may request an invalidation trial for a trademark that has been registered after an opposition has been filed, with the same facts and the same evidence and reasons.

 

Examination

After the formality examination, a substantive examination will be conducted regarding all registration requirements.

 

Information provision

If any person discovers a reason for non-registration of a pending trademark, he or she may submit a written opinion to the Wisdom and Property Bureau of the Ministry of Economic Affairs, accompanied by relevant evidence that has sufficient evidence.
*The examiner cannot accept the evidence attached to the written opinion provided by a third party as the basis for the decision of refusal unless he provides the applicant with an opportunity to express his opinion. . The examiner is not required to respond to a third party regarding whether or not to accept the written opinion, nor is it necessary to notify the final examination result.

 

Invalidation trial system

There is an invalidation trial system.

 

Is there a non-use cancellation system?

There is a non-use cancellation system. If a trademark is not used for three consecutive years without justifiable reason after registration, it may be canceled by a non-use cancellation trial.

 

Duration of trademark rights

The term is 10 years from the date of public notice of trademark registration (including the day of public notice) (can be renewed every 10 years).
The renewal procedure period is 6 months before the expiration date of the term.
*Even after the expiration date of the term, it can be renewed within 2 months from the expiration date by paying double the renewal fee.

 

Taiwan Supreme Court's opinion on parallel imports

 Article 36, Paragraph 2 of the Taiwan Trademark Law clearly stipulates "exhaustion of trademark rights" as follows:

"When a product bearing a registered trademark is traded and distributed in the domestic or foreign market by the trademark owner or a person with his or her consent, the trademark owner cannot claim trademark rights for the product."

This article provides the basis for parallel importers to legally import genuine products.
On the other hand, if the same trademark is acquired by different trademark right holders both domestically and overseas, and there is a certain economic relationship between the different trademark right holders, the application of the principle of exhaustion of trademark rights is affirmative. There was a negative theory. However, until now in Taiwan, when parallel importing,Only when the domestic and foreign trademark owners are the same, the trademark rights are exhausted and the trademark owner cannot assert rights against the parallel importer.This was the view taken in many judgments.

However, the Taiwan Supreme Court recently issued the following opinion in a civil judgment dated January 2020, 1 (No. 30 of 108 Taiwan):

-If a trademark right holder obtains trademark rights for the same trademark in multiple countries by licensing it or others, (omitted) If the trademark right holders in different countries have a licensing relationship or a legal relationship with each other, the license will not be granted. The effect of exhaustion will occur on the trademark owner who obtained the trademark.

・The principle of exhaustion of trademark rights stipulated in Article 36, Paragraph 2 of the Trademark Act is against the judgment of the Intellectual Property Court of the original court.The mistake was in ruling against parallel importers by stating that it applies only to cases where the trademark rights holders in and outside of Taiwan are the same.

■In response to the Supreme Court's decision, the above opinion has been clearly stated in the article-by-article commentary on the current Taiwanese Trademark Law.

 

 

Q & A

 

Q&A regarding patent infringement in Taiwan

Q1: Will I be held criminally liable if I infringe on patent rights?

A: From March 31, 2003, if you infringe on someone else's patent rights, you will only be subject to civil liability, not criminal liability.

Q2: What is the civil liability in case of patent infringement?

A: When a patent right is infringed and a claim is made for damages, the patentee can calculate the amount of damages from the following two options:
 ①Based on Article 216 of the Civil Code. However, if it is not possible to provide evidence of the amount of damages calculated, the patentee shall be entitled to the normal profits from the enforcement of the patent right minus the profits from enforcing the patent right after the infringement. The amount of damages sustained.
 ② Based on the profits that the infringer obtained from performing the infringing act. If the infringer is unable to prove the costs and necessary expenses, the profit earned shall be the total amount from the sale of the goods. In addition to the above-mentioned matters, if the patentee loses honor or trust in the business, the patentee may claim a corresponding amount of compensation.
 In accordance with the provisions of paragraph 3 above, if the act of infringement is determined to be intentional, the court may determine the circumstances of the infringement and award compensation in excess of the estimated amount of damages. However, the amount cannot exceed three times the amount of damages.

Q3: If an ordinary person manufactures a patented product that is on the market, what kind of liability will he be liable for?

A: If the product is marked as being patented, but the applicant has not yet obtained the patent, a private person will not be held liable for infringement even if the product is manufactured. However, if the application is a patent application and satisfies the requirements of Article 40 of the Patent Law, the patentee may claim compensation as appropriate.
 In other words, according to Article 40 of the Patent Law, after a patent application has been published, a person who has received a notification from the applicant regarding the contents of the patent application may continue to work on the invention during the period from the notification to the publication of the application. If the invention is carried out in the course of business, the patent applicant may claim appropriate financial compensation from said person after the patented invention has been published.
 The above-mentioned request may also be made against a person who, knowing that the patent application has been published, continues to work the invention in the course of business until the application is published.

Q4: What is the effect of patent rights?

A: According to the provisions of Article 56 of the Patent Law, the patentee of a product may, unless otherwise provided in this law, permit another person to manufacture the patented product without the prior consent of the patentee. shall have the exclusive right to exclude any offer for sale, sale, use or importation for any of the foregoing purposes.
 In addition, the patentee of a method shall not allow others to use the method or directly use the method without the prior consent of the patentee, unless otherwise provided in this law. shall have the exclusive right to exclude the goods manufactured from being used, sold or imported for the aforementioned purposes.
 The scope of patent rights must be determined based on the claims stated in the specification of the invention. When interpreting the claims, reference may be made to the specification and drawings.

Q5: Are there any restrictions on the exercise of patent rights?

A: According to Article 57 of the Patent Law, legal restrictions on the exercise of patent rights shall not be effective in the following cases (applicable mutatis mutandis to Article 108 of Utility Models and Article 125 of Designs). There are similar provisions):
1 When the invention is carried out as a non-commercial act solely for the purpose of research, education or experimentation;
2The invention has been worked in Taiwan or all necessary preparations have been completed in Taiwan before filing the patent application. However, if the knowledge of the manufacturing method has been obtained from the patent applicant within six months before filing the patent application, and the patent applicant has further indicated that the applicant's patent rights related to the knowledge are reserved, this provision shall apply. shall not apply;
3 If the article already existed in Taiwan before the patent application was filed;
4 When the goods are simply means of transportation or equipment for transit through Taiwan;
5 If a patent right acquired by a person who does not have the right to acquire a patent right is canceled as a result of an invalidation trial filed by the patentee, the licensee concerned must was exploiting the patent in good faith or had completed all necessary preparations therefor; and
6 When a patented article manufactured by or with the consent of the patentee is sold and then used or resold. The above manufacturing and sales are not limited to those performed in Taiwan.
Furthermore, according to the provisions of Article 58 of the Patent Law, patent rights for pharmaceuticals manufactured by blending two or more types of pharmaceuticals and the compounding method itself are not valid for prescriptions by doctors or pharmaceuticals prepared according to such prescriptions. shall not reach.
 Whether or not patent rights apply to specific individual cases is determined by the court.

Q6: Is there a time limit for claiming patent infringement?

A: Claims arising from infringement of a patent right shall be extinguished if the claimant fails to exercise the claim within two years from the time the claimant becomes aware of the infringing act and the party obligated to make compensation. In addition, those that have been infringing for more than 10 years will also cease to exist.

 

Other Q&A

Q1. What documents and materials are required to obtain a filing date in a foreign language specification?

A:
The documents and materials required to obtain the application date are as follows.
  (1) Two foreign language specifications
  (2) Applicant's name (or name), nationality, and address
  (3) Name and nationality of the inventor
  (4) When claiming priority, the filing country and filing date of the application that is the basis of the priority claim.
  (5) In the case of inventions related to biological materials,
    ①Deposit date, deposit number, or
    ② Name, deposit date, and deposit number of the foreign depositary institution approved by the Taiwan Intellectual Property Office
     (However, it is necessary to complete the deposit procedure with a Taiwan domestic depository institution within 3 months after filing the application in Taiwan.)

Q2. What documents and materials can be supplementary submitted after filing?

A:
The following documents and materials can be supplemented and submitted within 4 months from the filing date (an extension of 2 months is possible).
 (1) Deed of assignment signed and sealed by the inventor
 (2) Power of attorney (general power of attorney possible)
 (3) Taiwan Chinese specification (including claims and drawings)
 (4) Priority certificate
 (5) If there is a corresponding foreign application filed before the Taiwan filing date, whether or not it claims priority, its application number, filing date, and the country or organization that received the application.
 However, the following documents and materials must be submitted within three months from the application date. Extensions are not allowed.
 (1) Certificate of domestic deposit in Taiwan (if biological materials have already been deposited in Taiwan at the time of application in Taiwan)
 (2) Taiwan domestic deposit certificate and foreign deposit certificate (in the case of filing a Taiwan application with foreign deposit information and then performing deposit procedures with a Taiwan domestic deposit institution)

Q3: When a new application is submitted in a foreign language and the Chinese specification is supplemented, if 15 months have passed from the priority date, an amendment to the foreign language specification must be submitted to match the content of the Chinese specification. Is it possible to submit both at the same time?

A:
Only Chinese specifications can be supplemented or amended within 15 months after filing. Amendments to the foreign language specification can be submitted at the same time as supplementing the Chinese specification.

Q4: If the same person applies for a patent and a utility model for the same invention or device on the same day, how will the Taiwan Intellectual Property Office respond?

A:
(1) If it is discovered during the substantive examination that applications for the same invention or device have been filed simultaneously, the applicant will be notified to select only one application pursuant to Article XNUMX, Paragraph XNUMX, Paragraph XNUMX of the Patent Law. If the applicant selects the invention and withdraws the utility model, the substantive examination of the invention will continue; if the applicant selects the utility model and withdraws the invention, the formal examination of the utility model will be conducted; If neither is selected, the invention violates the provisions of Article XNUMX, Paragraph XNUMX, Paragraph XNUMX of the Patent Law, and the utility model violates the provisions of Article XNUMX, Paragraphs XNUMX and XNUMX of the Patent Law, as applied mutatis mutandis to Article XNUMX. Neither is patentable.

(2) If a utility model is registered through formal examination, even if it is discovered during the substantive examination of the invention that both applications have been filed, pursuant to the provisions of Article XNUMX, Paragraph XNUMX, Paragraph XNUMX of the Patent Act will tell you which one to choose. If the applicant selects the invention, the substantive examination of the invention continues. A utility model that has already been registered will be canceled pursuant to the provisions of Article XNUMX of the Patent Act, mutatis mutandis application, Article XNUMX, paragraph XNUMX, mutatis mutandis, paragraph XNUMX. Since the utility model right no longer exists from the beginning, the holder of the utility model right must bear responsibility for any damage suffered by others as a result of exercising the utility model right before its cancellation (Article XNUMX of the Patent Law). ) should be noted. Furthermore, if the applicant selects a utility model and cancels the invention at the same time, the substantive examination of the invention will be suspended.

Q5: When filing an application in Taiwan, is it possible to claim priority based on a PCT application?

A:
 Article 27 of the Taiwan Patent Law stipulates that ``an applicant must first legally obtain a patent for the same invention in a member country of the World Trade Organization (WTO) or a foreign country that recognizes mutual priority rights with the Republic of China. Priority can be claimed if a patent application is filed in the Republic of China within 12 months from the day after the date of the first patent application. ' and 'Foreign applicants may apply within the territory of a WTO member country or a country with which they have a reciprocal relationship, even if their country is not a member of the WTO or does not recognize mutual priority rights with the Republic of China.' You can claim priority if you have an address or business office in ” is stipulated.
 Therefore, when a Japanese applicant files a Taiwan application, there is no problem in claiming priority based on the PCT application.


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