TIPS^®  Taiwan Intellectual Property Special

China Updates

The Administrative Remedial Proceedings Applicable to Patent

Major reforms will take place in the administrative remedial proceedings applicable to paten/trademark. According to the officers with the Ministry of Economic Affairs (MOEA), the administrative remedial proceedings will be simplified together with the revision of relevant laws including Patent Law. That is, the current system of four instances at four levels will be changed into a system of three instances at three levels for the purpose of simplification. The administrative remedial cases concerning patent and trademark will be under direct jurisdiction of the MOEA instead of the Taiwan Intelligent Property Office (TIPO) in the future, for the purposes of simplifying the application procedures and saving the applicant's expenditure.

At present, the administrative remedial proceedings applicable to paten/trademark in Taiwan, namely patent rejection, patent re-examination, patent cancellation, trademark opposition, trademark review, trademark abolishment, and etc., consist of four instances at four levels. The applicant must first submit a brief to the Intelligent Property Office (the first level), followed by an appeal to the Ministry of Economic Affairs (the second level), and an administrative suit to Taipei High Administrative Court, and in the event of non-satisfaction, finally by an appeal to the Supreme Administrative Court (the fourth level). In comparison with the system of three instances at three levels that is widely adopted in most countries throughout the world, the system has one more instance at one more level.

In countries like US, Japan, Germany and P. R. China, a system of three instances at three levels is commonly adopted for remedial proceedings over patent / trademark disputes. The first level is usually before the Board of Appeal which consists of at least three senior members of the Parent / Trademark Bureau and shall hold a joint examination. The second level is an external judicial review involving matters of facts and law and the final level is a further judicial review involving only matter of law. However, in the case of lawsuits involving patent/ trademark disputes in Taiwan, such disputes are to be reviewed by the TIPO at the second level before they are qualified to appeal with the MOEA, under the condition that appellant is dissatisfied with the review conducted by the TIPO. If any party interested involved in the appeal proceeding is dissatisfied with the decision issued by the MOEA, he/she then seeks a final settlement from the Administrative Court. These procedures are relatively complicated that they exert negative effect on the economic development, as expeditious resolution is needed involving patent/ trademark disputes.

According to the statistics of the TIPO, there were over 80,000 patent application cases and almost 80,000 trademark application cases in 2006 being filed in Taiwan and the average pendency is 10 months from the date of application to the approval. However, some cases may last one or two years. In the event of patent / trademark disputes, it may take double time due to proceedings between the petitioners and respondents. What's even worse, some manufacturers may have to suspend their operation due to criminal and civil recourse in the case of infringement suits.

Therefore, in order to accelerate trial process for infringement cases, the TIPO has taken two solutions into consideration: the first is, through administrative appeal, to submit the dispute to the Examination Committee for its handling; and the other is to set up a dispute settlement mechanism within the MOEA. If the dispute remains unsolved, it may be submitted to the Administrative Court (or the Intellectual Property Court which is scheduled to be set up in 2008). The goal is to simplify the appealing procedures. In fact, in order to reduce the number of the disputed cases, Taiwan has actually adopted the supporting measures, including the practice of “Preliminary Notice of Rejection” that was implemented in January 2007 by granting inventors an additional opportunity to clarify disputable or ambiguous parts of the patent applications, with the intention of improving patent quality. At the same time, the approval rate for examination is improved while the number of cases to entering the re-examination stage is reduced upon the applicant amending or reducing the scope of claims following the advices given in the Preliminary Notice and the Search Report accompanying the Notice.