Patent enforcement proceedings

Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Taiwan established a specialised court (the IP Court) to adjudicate IP-related cases on 1 July 2008. The IP Court has jurisdiction over the first and second instances of civil actions, the second instance of criminal cases and the first instance of administrative litigation cases.

As the Patent Act fully decriminalised all types of patent infringement in 2003, all legal proceedings in Taiwan for enforcing patents rights against infringers are civil actions, which are generally brought before the IP Court. However, the IP Court has only ‘prioritised’ rather than ‘exclusive’ jurisdiction; that is, in the event that a patent infringement case is brought to a common civil court, the civil court may decide to move the case to the IP Court. However, if the common civil court accepts the dispute and renders the decision on its own, such decision may not be revoked for lack of jurisdiction.

The Patent Act also provides administrative border control measures and patentees may apply for detention of infringing goods. A patentee or its exclusive licensee can file a request for detention at customs to stop the import of allegedly infringing products.

Trial format and timing

What is the format of a patent infringement trial?

In the past, a patent infringement trial was handled by judges who normally lacked technical backgrounds. There was no discovery, no jury trial and no separate hearings (such as Markman hearings in the US) for claim construction. Different from the previous practice, where the judges in the common courts often relied heavily on the opinions of outside patent verification institutes to conclude whether infringement existed in a given case, in most cases the IP Court reviews the technical issues (namely, validity issues and infringement issues) by itself with the support of technical examination officers. Documentary evidence, factual witnesses (who may be cross-examined) and experts (who are generally appointed by the courts) are all admissible in the proceedings.

In response to criticism that judges do not possess sufficient technical understanding of patent issues, the IP Court is staffed by technical examination officers who have expertise in science and technologies. The technical examination officers not only sort out the controversies of both parties to clarify the disputes, but also provide to the judges reference opinions on technical issues.

Typically, a patent trial lasts one to two years at the first instance. The IP Adjudication Act (enforeced on 1 July 2008) specifically prohibits judges from staying the civil proceedings adjudicating infringement issues and requires them to make a determination on the defence of invalidity, while judges previously agreed to stay the civil litigation pending the parties’ exhaustion of administrative remedial procedures for related invalidation actions. The problem of long stays of proceedings has thus been ameliorated.

Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof for establishing the existence of infringement, as well as an infringer’s intentional or negligent act, is borne by the patentee, while the burden to prove invalidity and unenforceability lies upon the alleged infringer. As commonly applied in any civil case, the party that bears the burden of proof must satisfy the burden by a preponderance of the evidence.

Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The patentee has standing to sue for patent infringement. An exclusive licensee also has the same right, unless the licence contract provides otherwise, according to article 96.4 of the Patent Act. According to current court precedents, a non-exclusive licensee has no standing to sue in a patent infringement case. A distributor probably does not have standing to sue either, although there is currently no court precedent to give guidance on this issue.

An accused infringer may file a declaratory action under article 247 of the Code of Civil Procedure if it can illustrate the existence of its legal interests upon which a declaratory action is sought (eg, reasonable apprehension on being sued for patent infringement) and there is no other civil remedy available.

Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

There is no concept of contributory infringement or inducement of infringement similar to that applicable in the US. If the patentee intends to sue multiple infringers, he or she may do so under the joint tort theory, where the aider and abettor are jointly and severally liable for civil liability together with the primary infringer.

If each party only practises part of the element of a patent claim, there will be no patent infringement. However, under the joint tort theory, the court has found in one judgment that a party can only be jointly liable as an aider or abettor if there is a direct tortfeasor. This means that without a party satisfying all of the elements of a patent claim as the direct tortfeasor, there cannot be an aider or abettor to such patent infringement. Therefore, it would be very difficult, if not impossible, for multiple parties to be jointly liable if no party’s action actually satisfies all elements of a patent infringement claim. Although the concept of joint infringement has been discussed in many scholarly articles and public conferences, it is still an unresolved issue according to current precedents.

Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Yes, according to the Taiwan Code of Civil Procedure, multiple parties can be joined as co-defendants if the rights or obligations of the claim are common to them; or if the rights or obligations of the claim arise from the same factual and legal grounds; or if the rights or obligations of the claim are of the same nature and arise from the same kind of factual and legal grounds, as long as the court has jurisdiction over all defendants. As a result, all of the defendants need not be accused of infringing the same patents. Nevertheless, it is very rare for a patentee to initiate litigation against multiple parties who infringe different patents.

Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

The Patent Act makes the manufacture, sale, offer for sale, use or importation for any of the foregoing purposes an infringement of a product patent, while the use, sale or importation of a product made through the direct use of a patented process constitutes infringement of a process patent. Generally, only behaviour taking place in Taiwan will constitute infringement of a Taiwan patent. However, the importation of infringing products manufactured outside Taiwan will constitute an infringement.

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

The Guidelines for Patent Infringement Verification published by Taiwan’s Intellectual Property Office (TIPO) stipulate that the doctrine of equivalents shall apply, after verification by literal infringement fails. Judges have found infringement under the doctrine of equivalents where the claimed subject matter has the same functions, applies in the same ways and gets the same results as the literal reading of the claims, and in such cases, the subject equivalents will be liable for infringement.

Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Taiwan does not have US-like discovery proceedings. Instead, the Code of Civil Procedure allows a party to apply for an order requesting the other party to submit certain documents or evidence essential to resolution of the dispute during trial. If the judge so orders and the party ordered to produce evidence fails to comply without proper justification, the judge may uphold the applicant party’s assertion based upon the evidence. In addition, according to the Intellectual Property Case Adjudication Act, the IP Court can enforce such an order if the opposite party has no grounds to refuse the submission of the requested evidence.

The other mechanism with direct compulsory effect for evidence collection is the preservation of evidence proceeding. A party may file an application, before or after a civil litigation is initiated, for preservation of evidence on the ground that there is a risk that the relevant evidence might be concealed or destroyed. This is an ex parte proceeding and respondents will not become aware of the application until the judge arrives on site for execution with the ruling to be served.

If the parties feel that it is necessary to collect evidence outside of Taiwan, they must request the court to seek assistance from foreign authorities, Taiwan’s diplomatic agencies or other institutions or organisations.

Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Typically, a patent trial lasts one to two years at the first instance, but varies with the complexity of the subject matter of the case. The appellate courts generally take a year to 18 months to complete proceedings at each instance.

Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The costs of a patent litigation infringement lawsuit mainly include:

  • court fees, which are calculated at approximately 1.1 per cent of the value of the claims at the first instance and 1.65 per cent of the same at the appellate levels;
  • bonds required for preliminary injunction, or civil litigation applicable only if the plaintiff has neither a presence nor assets in Taiwan;
  • verification fees for court-appointed or party-retained institutes; and
  • attorneys’ fees.

 

There is no specific rule that prohibits contingency fee arrangements in patent litigation. The client can request a contingency fee arrangement with his or her attorney.

Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

The decision of the first instance in a patent infringement lawsuit made by one judge at the IP Court can be appealed to a panel of three judges of the same court, and the appellate decision by this panel of judges can in turn be appealed to the Supreme Court, provided that the value of the claim exceeds NT$1.5 million.

Under article 447 of Taiwan’s Code of Civil Procedure, no additional means of argument or defence is allowed at the appellate stage, except in cases where:

  • such additional means of argument or defence were prevented from being presented as a result of the court of first instance acting in contravention of the laws and regulations;
  • the occurrences giving rise to such additional means of argument or defence took place after the conclusion of oral arguments in the court of first instance;
  • additional means of argument or defence are presented for purposes of supplementing those already presented in the first instance;
  • the occurrences giving rise to such additional means of attack or defence are generally known or become known to the court in the course of performing its functions;
  • the court should take evidence on its own initiative with regard to such occurrences;
  • the party was unable to present such additional means of argument or defence due to reasons not imputable to him or her; or
  • it would be manifestly unfair to prevent the party from presenting such additional means of argument or defence.
Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

Taiwan’s Fair Trade Act prohibits enterprises from engaging in unfair competition, such as by abusing market power or by cooperation among horizontal competitors. Taiwan’s Fair Trade Commission has published the Guidelines for the Review of Cases Involving Enterprises Issuing Warning Letters for Infringement of Copyright, Trademark and Patent Rights, and the Guidelines on Technology Licensing Arrangements. Patentees will expose themselves to civil liabilities or administrative sanctions or even criminal penalties if the enforcement of patent rights violates the Guidelines or the Fair Trade Act.

Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Arbitration and mediation are both available as means to resolve patent disputes, but in practice, parties rarely opt for alternative dispute resolution techniques.

Scope and ownership of patents

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Yes, a patent can be obtained to cover software or business methods (under modern computer software architecture, but not including only a business method). However, the following subject matters are not patentable:

  • animals, plants and essentially biological processes for production of animals or plants (except for the processes used to produce micro-organisms);
  • diagnostic, therapeutic or surgical operation methods for the treatment of humans or animals; and
  • any invention that is contrary to public policy, morality or public health.
Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Unless the contract provides otherwise, a company owns the patent application right and patent right of its employees’ inventions on works for hire, while the employee is entitled to ask for appropriate compensation and his or her name to be indicated as the inventor. The patent application right and patent right of an employee’s invention other than that as a work for hire shall be vested in the employee provided that, if the invention is made through utilisation of the employer’s resources or experience, the employer may, after having paid the employee a reasonable remuneration, put the same invention or utility model or design into practice in the enterprise concerned.

The patent application right and patent right for an invention made by an independent contractor shall be vested in accordance with the relevant agreement. In the absence of such an agreement, the patent application right and patent right shall be vested in the independent contractor, provided, however, that the fund-provider shall be entitled to put such invention into practice.

Multiple inventors jointly own the patent application rights and must file the patent application jointly.

There is no special rule in the Taiwan Patent Act regarding ownership of a patent on an invention made by a joint venture. Ownership of the patent on such an invention, in general, will be decided through contract.

The ownership and the transfer of patent rights is published by the Patent Official Gazette and recorded in the database of Taiwan’s Intellectual Property Office (TIPO). Unless registered with TIPO, any transfer, trust, licensing, or pledge of a patent cannot be asserted against a third party.

Defences

Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?

The grounds on which a patent can be invalidated include:

  • unpatentability;
  • lack of novelty, inventive steps or utility;
  • failure of enablement; and
  • wrongful attribution of inventorship.

 

A patent can be invalidated (revoked) either by an invalidation action filed by any person to, or ex officio by, Taiwanʼs Intellectual Property Office (TIPO), the decision of which may be appealed to the Ministry of Economic Affairs (MOEA), then to a panel of three judges at the IP Court, and finally to the Administrative Supreme Court. While the civil courts handling infringement cases shall review the validity of a defence on their own, such decisions on validity are binding only between the parties and do not affect TIPO’s decision on the invalidation action. In other words, the procedure for the invalidation is still the ultimate mechanism to determine the validity of a patent.

In order to improve the quality of review in the patent invalidation procedure, TIPO introduced a hearing procedure for a patent invalidations on 30 March 2018. Either party can apply for this hearing, or it may be held ex offcio. For such hearings, a committee is established by three examiners to review the case, rather than only one examiner, as in a normal invalidation procedure. The committee will determine the issues and request all parties to exchange briefs asserting their arguments before the oral hearing. The oral hearing is conducted similarly to a court hearing, and allows all parties fully to express and debate their arguments. The hearings also allow interested parties and a limited number of members of the public to be seated by prior application. The committee makes decisions soon after the hearings conclude, and such decisions can be directly appealed to the IP Court without review by MOEA.

Absolute novelty requirement

Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?

Yes, there is an absolute novelty requirement for patentability. Prior art can be any information available to the public anywhere in the world. The Patent Act provides a 12-month grace period.

According to the latest amendment of the Patent Act passed by the Legislative Yuan on 30 December 2016, which took effect as of 1 May 2017, the grace period for invention patents and utility model patents is extended from six to 12 months. In addition, this amendment also raises the bar on the application of the grace period, whether the creation was disclosed with or without the intent of the applicant, and the applicant can claim the grace period (unless the creation was disclosed in the Taiwan Patent Gazette or the gazettes of foreign countries with the applicant’s consent). The applicant need not describe the fact or provide documents of proof at the time of filing.

Obviousness or inventiveness test

What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?

An invention is obvious or lacks inventive step if it can be easily accomplished by a person having ordinary knowledge in the relevant technical fields based on prior art before the application for patent is filed.

Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

Taiwan does not have the concept of inequitable conduct similar to that which in the US renders a patent unenforceable owing to an omission or wrongdoing by the inventors, particularly during the prosecution. However, a patentee’s violation of the Fair Trade Act or relevant guidelines published by the Fair Trade Commission is a good defence against the enforcement of a valid patent.

Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

Yes, the Patent Act provides that the right of a patent does not extend to the situation where, prior to filing for patent, the invention has been used in Taiwan, or where all necessary preparations have been completed for such purpose, except when the knowledge of the manufacturing process was obtained from the patent applicant within 12 months prior to applying for the patent and the patent applicant has made a statement concerning the reservation of his or her patent right therein (the 12-month aforesaid period has been extended only for invention patents and utility model patents, while the six-month period still applies to design patents). This defence covers all types of inventions and is limited to commercial uses. There is also a defence available where the accused infringer put the invention into practice for research, educational or experimental purposes only, with no profit-seeking acts involved. In addition, there is another defence available where the accused infringer has put the invention into private practice, with no commercial purposes involved. The latter two defences can be used whether the activity takes place before or after the application for the patent is filed.

Remedies

Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature? How are royalties calculated?

The Patent Act stipulates three alternative ways to calculate damages resulting from a patent infringement. The first method calculates the actual damages plus lost benefits of the patentee. In the absence of proof to show the amount of damages, a patentee may subtract the profit earned through the practice of the patent, after the existence of infringement from the profit normally expected through the practice of the same patent, and take the balance as the amount of the damages. The second method calculates the profit that the infringer gained from the infringement. The third method calculates the reasonable amount of royalty that may have been collected from exploiting the invention patent under licence. Where the infringement downgrades the business reputation of the patentee, the patentee can claim additional damages. Damages start to accrue when the infringement activity takes place. The damage awards may be increased as punitive damages where the infringement is found to be wilful.

According to the Precautionary Matters on Handling Civil Procedure, the court, in the event of an intellectual property rights infringement case, may request the competent authority or other appropriate authorities to estimate the damages by ruling on the plaintiff’s motion, or refer to the amount calculated on the basis of reasonable royalties that may be collected from exploiting the invention patent being licensed, for purposes of determining the damages. Additionally, the court may order the defendant to submit documents or information for calculating damages, as the approved reference amount of damages.

Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?

A patentee may obtain a final injunction, which is a remedy at law, against future infringement if the judgment finding infringement becomes irrevocably final. Patentees can file a preliminary injunction, before or after a civil litigation is filed, if they can satisfy the following legal requirements: the existence of a disputed legal relationship determinable by followed-up civil litigation; potential irreparable harm or urgency unless the preliminary injunction is granted; and provision of a bond sufficient to compensate the respondent if the claim is later proved to be without merit. The IP Adjudication Act (in force on 1 July 2008) specifically requires that the judge take into account the ‘likelihood of success on the merits’, including on the issues of infringement and invalidity, and to consider and balance the applicant’s irreparable harm or urgency against the respondent’s burden or hardship and the public interest. Thus, it has lately become more difficult to obtain preliminary injunctions.

The injunction is effective only against the respondents of the ruling or execution orders. If the patentee wants to have the effectiveness apply directly against the infringer’s suppliers or customers, it must include them as respondents in the application or, at the very least, as respondents to execution orders.

Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?

New border protection measures were added to the Patent Act and were enacted on 3 January 2014 to strengthen patent protection. Subsequently, the Regulations Governing Customs Detaining Goods Suspected of Patent Infringement were promulgated on 24 March 2014. A mechanism for a ‘request to detain’ was introduced and a patentee may request customs to detain imported goods suspected of infringing the patent right by providing relevant material and depositing a security. However, customs will revoke the detention if:

  • the patentee does not initiate infringement litigation within 12 days;
  • the infringement litigation is finally dismissed;
  • the request is voluntarily withdrawn; or
  • the owner of the detained goods provides a counter-security.

 

Applicants who request the detention must compensate the alleged infringer for any damages caused by the wrongful detention in the event that non-infringement is ruled in a final judgment by a court.

In addition, in a patent infringement case where the goods in question are suspended from import or export by a provisional measure (namely, preliminary injunction) ordered by the judicial authority (namely, the IP Court), the customs authority will implement necessary measures after the patent owner (or exclusive licensee) provides the information required to identify the goods, such as the time of import or export of the goods in question, the location, the name of the carrier for import or export, and the flight number or declaration form number, unless the goods in question have already been released by the customs authorities.

Attorneys’ fees

Under what conditions can a successful litigant recover costs and attorneys’ fees?

Attorneys’ fees are recoverable only when the laws require the parties to be represented by attorneys-at-law for litigation. The parties are not legally required to be represented by attorneys at the first and second instances of a civil litigation, and thus attorneys’ fees are not recoverable there. Attorneys’ fees for an appeal to the Supreme Court are recoverable to the extent permitted under the Code of Civil Procedure because the parties are legally required to be represented by attorneys-at-law at the Supreme Court.

Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate? Are opinions of counsel used as a defence to a charge of wilful infringement?

On 29 November 2011, the Legislative Yuan amended the Patent Act and abolished the rule of punitive remedies under the Patent Act. On 31 May 2013, the Legislative Yuan again amended the Patent Act and adopted the rule of punitive remedies. Now, under the new Patent Act, if the infringement is found to be deliberate or wilful, the court may grant monetary compensation of an amount higher than the amount of damages estimated but no more than three times the amount of the actual damages. Any indication that the infringer had actual knowledge of the existence of the patent can be relied upon to rule deliberate or wilful infringement. For example, judges have found wilful infringement in cases where:

  • the infringer previously had a licence agreement with the patentee but failed to pay the royalty and this intentionally resulted in termination of the licence, and the infringer filed several actions to Taiwanʼs Intellectual Property Office (TIPO) to invalidate the patent in dispute; or
  • the infringer previously purchased the patented products frequently from the exclusive licensee.

There is no specific rule as to whether the opinions of counsel are used as a defence to a charge of wilful infringement. Although there is a case in which a defendant relied upon opinions of counsel as a defence to a charge of wilful infringement, the court did not express its opinion on this issue in the judgment. As such, there is currently no authoritative precedent on this issue. In any event, this issue will be reviewed according to the evidence rules under the Code of Civil Procedure.

Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The right to claim patent infringement is extinguished if not exercised within two years from the time the patentee becomes aware of the infringement and of the identity of the infringers, or within 10 years from the time of the occurrence of the infringement.

Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

The patent certificate number must be indicated on the patented article. If such marking cannot be fixed on the patented article, the patentee may make such marking on the labels or packaging, or make such marking in a conspicuous way sufficient to draw people’s attention. Where no patent marking is made, evidence must be produced when claiming damages to prove that the infringer knows or has a reason to know that said article is protected by a patent.

False patent marking may constitute a violation of the Fair Trade Act and may also lead to criminal sanctions and civil liabilities. The Fair Trade Commission has rendered several judgments relating to false patent marking and ruled that such act is a violation of the Fair Trade Act, which may result in a prohibition of the act and an administrative fine. Moreover, under certain circumstances, false patent marking may also violate the provisions of the Criminal Code and lead to criminal sanctions such as imprisonment and criminal fines. In such event, as the false patent marking would also constitute a tort, the injured party might also sue for compensation in a civil proceeding.

Licensing

Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

There are no specific restrictions on the contractual terms of a patent licence. However, the new Patent Act clearly defines two kinds of licences: exclusive and non-exclusive. An exclusive licensee shall, within the scope of the licence granted, exclude the patentee and third parties from exploiting the patented invention. A licence or transfer of a patent will be void if the agreement will give rise to unfair competition because it prohibits or restricts the assignee from using any specific article or process not furnished by the assignor or licensor, or requires that the assignee purchase products or raw materials of the assignor that are not protected by patent. In addition, the patentee must comply with the Fair Trade Act and relevant guidelines for licensing the patents.

Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

A compulsory licence is available to deal with national emergencies or to make non-profit-seeking use of a patent for enhancement of public welfare or, in the case of an applicant’s failure to reach a licensing agreement with the patentee concerned under reasonable commercial terms and conditions within a considerable period of time, Taiwanʼs Intellectual Property Office (TIPO) may, upon application, grant a right of compulsory licensing to the applicant to put the patented invention into practice, provided that such practising shall be restricted mainly to the purpose of satisfying the requirements of the domestic market.

However, if the application for compulsory licensing of a patent right covers semiconductor technology, such an application may be allowed only if the proposed practice is for the purpose of a non-profit-seeking use contemplated to enhance public welfare. In addition, TIPO may also, upon application, grant to the applicant a compulsory licence to practise the patented invention in the event that the patentee has imposed restrictions on competition or has committed an act of unfair competition, as confirmed by a judgment given by a court or a decision by the Fair Trade Commission. Further, for purposes of assisting countries with insufficient or no manufacturing capacities in the pharmaceutical sector to obtain pharmaceutical products needed in treating HIV/AIDS, tuberculosis, malaria and other epidemics, TIPO shall, upon request, grant a compulsory licence for the requester to exploit a patent concerned for the purpose of producing such pharmaceutical products and their export to eligible importing countries.

The grantee of the compulsory licence shall pay to the patentee appropriate compensation. In the case of dispute over the amount of such compensation, the amount shall be decided by TIPO.

Patent office proceedings

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

An invention patent typically takes approximately two years to be granted if no Office Action is issued. Typically, official fees from the filing of an application to the receipt of the patent certificate, where no additional office actions were encountered, would start at the basic fee of NT$15,000 (including the filing fee and examination fee), while attorneys’ fees for processing the prosecution vary. However, the examination fee was adjusted on 1 January 2010 and applies to patent applications filed on and after 1 January 2010. The annuity fee was also adjusted and now applies to all applications. The examination fee is calculated based on the number of claims and is not a fixed flat fee. The basic fee is NT$7,000 (NT$1,000 lower than the previous fee), but Taiwanʼs Intellectual Property Office (TIPO) will charge an additional fee if more than 10 claims are made (NT$800 for each further claim). Additionally, if the total number of pages of specifications, claims and drawings in the application exceeds 50 pages, TIPO will charge another additional fee (NT$500 for each page in excess of 50 pages). The annual fee to maintain an invention patent is NT$2,500 for the first three years, and this amount gradually increases over the years.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Yes, there are two procedures to expedite patent prosecution.

The first is the Accelerated Examination Programme. The applicant can apply for this procedure under the following three conditions:

  • the application’s foreign counterpart has been granted under substantive examination by a foreign patent authority;
  • the European Patent Office (EPO), Japanese Patent Office (JPO) or US Patent and Trademark Office (USPTO) has issued an office action during substantive examination but has yet to allow the application’s foreign counterpart; or
  • the invention application is essential to commercial exploitation.

 

If the application is proceeding under the condition identified at the final bullet point, then a fee of NT$4,000 will be charged.

The second procedure is the Patent Prosecution Highway. Currently there are three patent authorities cooperating with TIPO: USPTO, JPO and Spanish Patent and Trademark Office. This programme enables an applicant whose claims are determined to be allowable and patentable in the Office of First Filing (OFF) to have the corresponding application filed in the Office of Second Filing (OSF) and advanced out of turn for examination, while at the same time allowing the OSF to exploit the search and examination results of the OFF.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

According to the Patent Act, an applicant shall submit the application form, descriptions, claims, abstract and drawings to Taiwan's Intellectual Property Office (TIPO). According to article 26 of the Patent Act, a description shall disclose the invention in a manner clear and sufficient for it to be understood and carried out by a person ordinarily skilled in the art. A claim shall define the claimed invention, and each claim shall be disclosed in a clear and concise manner and be supported by the description. An abstract shall clearly contain a summary of the disclosed invention. In addition, the manner of disclosure for description, claim, abstract and drawings shall be prescribed in the Enforcement Rules of the Patent Act.

TIPO has also issued the Substantive Examination Guidelines (Guidelines) according to which the TIPO reviews the applications received and decides whether a patent application should be granted. The Guidelines set forth were drafted based on the practices of the USPTO, JPO and EPO, and so their content is quite similar to the international patent prosecution practice. In short, the requirements of utility, novelty and inventiveness play important roles when TIPO reviews the applications. Moreover, the Patent Act clearly stipulates that the claims must be supported by the specification and drawings. If the claims contain features that are not disclosed in the specification or drawings, the application will not be allowed.

Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The Enforcement Rules of the Patent Act require an applicant to disclose prior art known to the applicant. According to TIPO, however, failure to disclose will not necessarily affect the validity of the patent, as long as it does not cause persons skilled in the art to be unable to understand the content and how to practise the invention.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

A patent applicant may supplement or amend the claims of an earlier filed application, provided that the content of the supplement or amendment does not exceed the scope of the specification or drawings disclosed in the original patent application, except for correction of translation errors.

If the supplement or amendment exceeds the scope of the specification or drawings, then the patent applicant must file a further application based on a prior application filed in Taiwan on which it can claim priority in respect of the invention described in the specification or drawings submitted along with its prior patent application, except in the following circumstances:

  • where a period of 12 months has elapsed from the filing date of the prior patent application;
  • where a claim for priority right upon a foreign application has been made in respect of the invention or utility model described in the prior patent application;
  • where the prior patent application has been divided into divisional applications or has been converted;
  • where the examination decision has been made with respect to the prior patent application; or
  • where the earlier patent application has been withdrawn or dismissed.
Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

An applicant for an invention patent or a design patent may apply for re-examination against a rejection decision within two months from the date on which TIPO’s decision is served. Unless the application is rejected on procedural grounds or on the ground of an applicant’s ineligibility, the re-examination proceeding is the prerequisite for a later appeal to MOEA, the panel of three judges of the IP Court, and then the Administrative Supreme Court.

Since 2004, this re-examination proceeding no longer applies to utility model patents, as a utility model patent now merely requires a formality examination by TIPO rather than a substantive examination. Thus, an applicant for a utility model patent may directly appeal to Ministry of Economic Affairs (MOEA) against an adverse decision within one month of the date on which TIPO’s decision is served. The MOEA’s decisions may be further appealed to a panel of three judges of the IP Court and finally to the Administrative Supreme Court.

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

No, the Patent Act has abolished the opposition procedure that previously allowed third parties to oppose a grant within three months after the application was published. Now, the only mechanism to protest a patent is to file an invalidation action after the patent is granted.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

Taiwan utilises a first-to-file system, pursuant to the Patent Act. Therefore, when multiple applications are filed for the same invention, TIPO will only grant a patent to the first applicant to file.

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

The Patent Act allows patentees to file an application to make amendments to the contents of the specification and drawings only in respect of the following matters: deleting the claims; narrowing the scope of the claims; correction of errors or translation errors; or explanation of obscure descriptions. Any amendment to be made cannot exceed the scope of content disclosed in the original specification or drawings when the patent application was filed, and cannot substantially expand or alter the scope of the patent claims. Upon approval of the amendments, TIPO will publish the cause of such amendments in the Patent Official Gazette. The effect of the amendments on the specification or drawings shall, upon publication, be retroactive to the filing date of the patent application concerned. A patent can be invalidated (revoked) either by an invalidation action filed by any party to, or ex officio by, TIPO.

There is no re-examination proceeding in the sense that any person at any time may challenge the patentability of a patent on the basis of prior art. Rather, re-examination under the Patent Act is the prerequisite for an applicant applying for an invention patent or a design patent to go through the administrative remedial procedure (more information related to re-exmination is described in "Patent office appeals").

The court may not on its own amend the patented claims during a lawsuit.

Patent duration

How is the duration of patent protection determined?

The term of an invention patent is 20 years from the filing date of the patent application. In the event of invention patents covering pharmaceuticals, agrichemicals or processes for preparing the same, a patentee may apply for an extension of the patent term of no longer than five years if, pursuant to other acts or regulations, prior government approval must be secured to practise such patents, which are obtainable only after the publication of the patents. The term of a utility model patent is 10 years from the filing date, while that of a design patent is 12 years from the filing date.

Update and trends

Key developments of the past year

What are the most significant developing or emerging trends in the country’s patent law?

Amendments to Taiwanʼs Patent Act

The latest amendments to the Taiwan Patent Act were promulgated by presidential order on 1 May 2019. There are two major changes in the amendments. The first is that multiple restrictions have been relaxed, including the applicable range of, and deadline for, filing a divisional application after an original patent application is approved and the extension of the patent term of design patents. The second is that the deadline for submitting new reasons and evidence in invalidation actions will be controlled. The major changes proposed to the Patent Act are summarised below.

Deadline for filing divisional applications after original patent applications are approved

Under original Patent Act, a divisional application must be filed before its original patent application is approved. The only exception is that a divisional application may be filed within 30 days after the date on which the original patent application is granted. According to the amendments, the statutory deadline is extended from 30 days to three months after the date on which an approval notice (including a re-examination decision) for the original patent application is received and utility models are also eligible for this expanded exception.

Improved invalidation proceedings

In order to avoid undue delays in the review of invalidation requests, new restrictions are introduced by the amendments, which stipulate that a request for invalidation must provide invalidation reasons or evidence within three months after the date of filing the request for invalidation (statutory time period) and any submission after that statutory time period will not be examined. Moreover, a restriction on post-grant amendments is also stipulated in the amendments.

Post-grant amendments to utility model patents and changes in the examination of post-grant amendments of utility model patents

Post-grant amendments of utility model patents will be subjected to substantive examination, rather than a mere formality examination as exists under the current Patent Act. Additionally, under the amendments, post-grant amendments to utility model patents must be filed within any of the following time periods:

  • invalidation proceedings for said utility model patents;
  • after a request for a technical evaluation report of a utility model patent is accepted; and
  • litigation regarding the utility model patent.

 

Extension of the patent term of design patents

In view of industry proposals and in order to harmonise with international practices, the patent term of design patents is extended from the current 12 years to 15 years, starting from its filing date.

Amendments to the required retention duration of patent files

The required retention duration of patent files is adjusted in the draft amendments to overcome insufficient storage space. Specifically, only files deemed to have preservation value as confirmed by the Specific Patent Agency must be kept permanently. Moreover, the required retention duration for non-permanent preservation patent files is also stipulated.

Patent linkage regulations and implementations

On 31 January 2018, Taiwan promulgated Patent Linkage Regulations for the Pharmaceutical Affairs Act (PAA), and these regulations became effective on 20 August 2019. Provisions regarding patent linkage are enacted at chapter 4-1, which includes articles 48-3 to 48-22 of the PAA. Likewise, under PAA authorisation, the competent authority of the central government, the Ministry of Health and Welfare (MOHW) has also enacted sub-regulations and provided directives, guidelines and administrative correspondence to supplement more specifically the content for patent linkage. 

When a firm acquires a permit for a new drug from the Taiwan Food and Drug Administration (TFDA), if that firm deems it necessary to submit the patent information regarding the drug, it will submit relevant documents and information to the TFDA and register the information regarding its new-drug patent on the Drug Patent Linkage Information System (the Orange Book), within 45 days from the day after the date of its receipt of the drug permit.

When a firm applies for a generic drug permit, with respect to the patent of the approved new drug listed by the holder of the new drug permit, the firm will file certain documents and declare either that:

  • no patent information for the new drug has been listed;
  • the patent for the new drug has expired;
  • the TFDA will issue the generic drug permit after the patent for the new drug has expired; or
  • the patent for the new drug shall be revoked or will not be infringed by the generic drug, subject to the application for drug permit. 

 

If the documents filed are sufficient and comply with the requirements, TFDA will issue a notice to the generic-drug firm. Within 20 days from the day after the date of the receipt of the notice, the generic-drug firm will proactively inform the holder of the corresponding new drug permit and its patent owner to declare one of those four items listed above. If the patent owner deems that the generic drug infringes, or likely infringes its patent, the patent owner must sue the generic-drug firm by patent infringement litigation within 45 days from the day after the date of its receipt of the notice. Meanwhile, the holder of the new drug permit must inform TFDA to suspend issuance of the permit for the generic drug for 12 months, but the examination procedure for such generic drug will continue.

With regards to societyʼs ability to access medications and the protection of pharmaceutical inventions, MOHW and TFDA have endeavored to strike a balance between the public and industry interests. Thus, the competent authority has referred to several legislative models (such as in the United States, Canada, and South Korea) to enact Taiwanʼs patent linkage legislation. Patent linkage not only protects new-drug firmsʼs new-drug patents, but also encourages generic-drug firms to research other generic drugs for new-drug patents. Within the patent linkage system, Taiwanʼs pharmaceutical and drug manufacturing industry thrives and refines the overall quality and quantity of medications.

Law stated date

Correct on

Give the date on which the information above is accurate.

30 April 2020.