TIPS^®  Taiwan Intellectual Property Special

TIPO Starts Sending Annuity Payment Reminders  and Double Payment Reminders by E-mail Communications

As of July 1, 2005, the TIPO started sending patent applicants or patent attorneys on record the Annuity Payment Reminders and Double Payment Reminders by e-mail communications, in hopes of reducing paper consumption, providing faster services and reducing postal costs, if the applicants and patent attorneys agree to such arrangement with the TIPO by providing designated e-mail addresses.

However, since many applicants and patent attorneys have not established the proper channels for receiving such reminders, the prior services of sending patent applicants or patent attorneys on record the Annuity Payment Reminders and Double Payment Reminders by postal routes will continue if the applicants and patent attorneys decline the new services by e-mails.

The public, however, seem to prefer a new system where annuity payments can be effected on-line over either via electronic wiring or credit card payments, to this new service provided by the TIPO, as electronic reminders usually will still need to be printed out by the patent applicants or patent attorneys for docketing purposes.

Five-Year Data Exclusivity Right for New Drugs of New Ingredients

Foreign original drug developers have urging Taiwan to implement the provision of Article 39.9 of the Agreement of Trade-Related Aspects of Intellectual Property Rights (the TRIPS), which provides exclusive protection for a certain period of time on the data of newly developed drugs.

The partial amendment to the Pharmaceutical Affairs Act was promulgated on February 5, 2005. The newly added Article 40-2 provides that after the license for a new drug of new ingredients is issued, a five-year protection period of the data exclusivity right is granted. Without the consent from the license holder, other drug manufacturers shall not refer to or quote the application information of the original drug in order to apply for registration.

Nevertheless, after three years upon the issuance of a license for a new drug of new ingredients, other drug manufacturers may apply for registration of genetic drugs, 2 years before the data exclusivity right expires, but it has to wait until the data exclusivity right expires that the registration should allowed. Therefore, a generic drug manufactures may file the application first and the drugs can be marketed right upon the expiration of the five-year data exclusivity right.