TIPS^®  Taiwan Intellectual Property Special

Patent

How do you register or secure patent rights, and is national or international coverage most appropriate?

Taiwan’s current Patent Act stipulates a first-to-file system. Taiwan is not a member of the Paris Convention; as such, only national protection is available. However, as a member of the WTO Agreement on TRIPS, applicants from the WTO member countries (except China) may enjoy the benefit of priority claim based on its original application in a member country.

A filing date may be obtained by submitting a specification in any language. A Chinese translation of the specification as well as the executed assignment, power of attorney and certified copy of priority document shall be submitted within four months, which may be further extended to six months, from the date of filing.

What are the costs of registering a patent, and what are the costs of defending it?

The cost of registering a patent generally ranges from $6,000 to $10,000. The translation fee is a major determining factor. In addition, the number of office actions issued by the Taiwan Intellectual Property Office (TIPO) will influence the final cost.

Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?

A serious mistake that results in the loss of priority rights is that companies assume that Taiwan is a member of the Patent Cooperation Treaty (PCT) and thus fail to file in Taiwan within 12 months of the original filing date. The situation may worsen when the patent is laid open on the 18th month after its first filing.
Companies that have filed a PCT application, but subsequently apply in Taiwan after the laid-open date occurs, lose the novelty to obtain their patent right in this jurisdiction.

Currently, Taiwan IP Office has not yet recognized priority dates claimed from a national Chinese application or an application filed in the name of a Chinese entity. Although this barrier may be overcome very soon due to the recent cross-straight IP negotiation, the remedial solution before actual implementation of the mutual recognition on priority dates is to file a PCT application in China, then claim the priority date therefrom and/or do so in the name of a non-Chinese entity in the subsequent Taiwanese application.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

The key threat to patent owners is contributory infringements. Patent infringement can be categorized into direct infringement and indirect infringement. Direct infringement is the only circumstance in which the court usually finds a patent infringement. Indirect infringement includes active inducement and contributory infringement; however, due to lack of statutory support from the Patent Act, the courts in Taiwan do not recognize these types of infringement, except where inducement is clear.

It may be the best strategy to pursue contributory infringement under the “joint offender” provision of tort under the general Civil Law. By adopting this strategy, the prerequisite condition is that there must be a direct offender that constitutes a direct infringer. Although it is not necessary to sue the direct infringer, who is usually also the end customer of the patentee, it is likely that the courts will order the direct infringer to intervene; once the order is made, the judgment will be binding on the direct infringer, whether intervening or not.