TIPS^®  Taiwan Intellectual Property Special

Recent Developments in the Intellectual Property Legislation

In compliance with the relevant regulations of the World Trade Organization (WTO), Taiwan is now actively engaging in legislative amendments. The following is the recent developments in the intellectual property legislation announced by the TIPO.

1. Patent Law

The TIPO proposed a draft bill of Patent Law Amendment and it is now pending in the Legislative Yuan. The draft contains the following:

(1) To simplify the rule that “where two or more persons jointly file a patent-related action, each of them shall execute the documents pertaining to the aforesaid proceedings unless one of them is designated as their representative by mutual agreement.”

(2) To introduce the domestic priority system. After patent application is filed, during certain period of time, the applicant can summit supplement or improvement to the same invention, and claim priority based on the previous filing date.

(3) The new draft also introduces the lay-open system. Certain period of time after the patent application is filed, the invention will be disclosed to the public, in order for the industry to get information of the new technology.

(4) The timing to summit supplement or amendment to a patent application is modified as the introduction of the lay-open system.

(5) To clarify the legal effects of the administrative remedies for an opposition or invalidation. When an opposition or invalidation is ruled to be failed, no one can initiate the invalidation based on the same facts and evidence.

As to eliminating the criminal penalties from the Patent Law, this draft bill did not contain any amendment of the criminal penalty. However, it is known that there are 45 congressmen proposing to remove criminal penalties for patent infringement. This issue raises concerns of patentees, both domestically and internationally. The final decision is still up to the Legislative Yuan.

2. Copyright Law

In responding to the development of the Internet, the World Intellectual Property Organization (WIPO) passed WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty in 1996. The TIPO is working on the Amendment of Copyright Law in accordance with these two treaties.

1. Providing the Right of Communication to the Public, amending the definition of public broadcast and public performance, and modifying Fair Use provisions in accordance.

2. Adding Anti-Circumvention Provisions and Copyright Information Management Provisions.

3. Clarifying the legal effects of copyright licenses (including exclusive licenses).

4. Adding the recordation requirement of the assignment or trust of plate rights.

5. Eliminating the examination of the royalty rates for the performance right societies by the Copyright Examination and Mediation Committee.

6. Reviewing the criminal penalties for copyright infringement; eliminating the criminal penalties for infringing moral rights, and distinguishing the punishment for infringing copyright, based on whether the defendant had the intent to make profits.