The Greater China IP Updates – May 2022

Effective since March 1, 2022, the Taiwan Intellectual Property Office (TIPO) has implemented a new measure for transnational remote video interviews after amending the rules for the Program for Interviews for Patent Cases. This will reduce the need for traveling in light of the pandemic situation and will enhance the overall efficiency of the examination system. The new measure will allow applicants and patent attorneys to participate in remote video interviews with examiners by connecting to the conferencing system via an appropriate remote location. Some of the main points of the new regulations are:

1. For patent cases other than in the invalidation proceedings, where a party applying for an interview petition if the interview can be done remotely and the petition is permitted by TIPO, then the interview may be conducted remotely.

2. The appropriate remote location for the interview should be in a non-public place, be equipped with the hardware and software specified by TIPO and with the capability to ensure the proper quality of video transmission. Otherwise, the remote video interview will not be permitted.

3. In the interview, the examiner should read out the concerned issues and key points of the interview, and the record of the interview should be transmitted to and signed or sealed by the persons participating in the interview and then returned to TIPO.

4. Taking photographs as well as audio or video recording during the remote video are not allowed.

Proposed Amendments to Taiwan’s Copyright Law

In an effort to move closer to international norms of intellectual property legislation, the Ministry of Economic Affairs has proposed amendments to the Copyright Law. This is thought to be necessary taking into consideration the rise of digital media and also for Taiwan’s application to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). Firstly, under the current Copyright Law, infringements are indictable only upon complaint (IUC), which allows copyright owners the right to end criminal proceedings if it was to their advantage to settle out of court. The draft amendments being considered now stipulate that a copyright infringement constitutes a non-IUC offense due to any one of several different conditions such as: if the infringed work is provided for a fee, if the infringement involves exploitation of the entirety of the infringed work in its original form, if the infringement costs more than 1 million NT Dollars in damage to the owner and if the infringement involves one of:

1. Reproducing a copyrighted work into a digital copy without authorization for the purpose of sale or rent.

2. Distributing or, with the intent to distribute, publicly displaying or possessing a digital infringing copy with the knowledge that it is an infringing copy.

3. Publicly transmitting a copyrighted work without authorization.

In sum, the new redefinition means that the typical infringements found on the internet are now taken into account, with the caveat that the 1 million NT Dollars threshold amount is met. Being under the non-IUC offense category, the above infringements mean that no complaint needs to be filed and even if a complaint is filed, withdrawal of complaint cannot terminate legal proceedings. One complication is that when filing a complaint, the copyright owner can’t be sure of the monetary damage until the prosecutor has done the assessment. Perhaps, this will be further resolved before the Amendment is promulgated.

Amendments to Taiwan Patent Law

In order to clarify the patent linkage system, an amendment to the Patent Law was passed in April 2022. Previously, a patentee or an exclusive licensee of a patent for a new drug could prevent the Taiwan FDA from issuing a drug approval of an equivalent generic drug for a period of up to 12 months if the relevant information was listed by the FDA or the patentee (or licensee) had filed an infringement lawsuit within 45 days after receipt of a mandatory notification from the generic drug applicant that it believes the patent is either invalid or not infringed and has informed the FDA likewise. An infringement lawsuit is not covered clearly by the Pharmaceutical Affairs Act as to what remedies are likely, so patentees might prefer to use the courts after the 45 day period. To solve this and related issues, in the interests of fairness to both parties, a new article (60-1) covering the following scenarios has been inserted into the Patent Law as follows:

1. A patentee or an exclusive licensee in an infringement case can now call upon a court decree ordering a defendant generic drug company to stop infringement after receipt of a generic drug applicant’s invalidity or non-infringement notice.

2. Such a lawsuit can refer to a listed patent in the information storage system or a non-listed patent. Method patents are non-listed.

3. If the patentee or exclusive licensee does not file a suit within the 45-day period, the applicant for the generic drug approval is allowed to file a declaratory judgment for non-infringement.

Such a declaratory judgment can be filed against any listed patent for the new drug or against a listed patent along with a non-listed but related patent which might be a method of manufacturing the drug. If there are multiple patents listed for a new drug, but only some of them are mentioned in the lawsuit filed by the patentee, the declaratory judgment can be filed against the other patent claims.

China Maintains Anti-Squatting Efforts against Winter Olympics Trademark Applications

The China National Intellectual Property Administration (CNIPA), on March 21, 2022, sent out a pronounced message, rejecting 1,270 trademark applications in connection with the Beijing 2022 Winter Olympics and Paralympic Games.

Although the games are over, CNIPA continues to be vigilant about the malicious squatting of Olympic-related trademarks including mascots, slogans, athlete’s names and venue names. The CNIPA had already placed IP protection for the Beijing 2022 Games high on its agenda by giving an all-around protection package to relevant IPRs, constantly waging special campaigns on malicious trademark squatting, and listing the Beijing 2022 symbols for the Winter Olympics and the Paralympics as special symbols. For example, in a February official circular, 429 trademark applications were rejected under the Regulations on the Protection of Olympic Symbols and Item 8 under Paragraph 1 of Article 10 of the Trademark Law. 43 already registered trademarks were declared invalid under the Trademark Law Paragraph 1 of Article 44.

The CNIPA campaign will be maintained as long as necessary so that those who choose malicious squatting of such trademarks with bad faith and the firms that represent them are eliminated.

CNIPA Hosts 2022 National IP Publicity Week

The China National Intellectual Property Administration held a press conference on March 30, to promote the National IP Publicity Week activities that will be held online and on site from April 20 to 26.

The aim is to bring more awareness to the importance of protecting intellectual property by respecting knowledge, advocating innovation, integrity and respect for the rules and regulations in order to build up the country into an IP leader. There will be exhibitions in celebration of recent IP achievements as well as dissemination of the Outlines for Building an Intellectual Property Power (an outline of plans between 2021 and 2035).

The main on site venue will be in Beijing, but there will be parallel sessions in Hubei, Inner Mongolia, Jiangsu and Guangzhou linked by live streaming. Because the theme of World Intellectual Property Day 2022 is IP and Youth – Innovating for a Better Future, the CNIPA will invite young representatives to share their IP work experience. In addition, the CNIPA will interact with overseas IP institutions and media to publicize IP developments in China. It was revealed that currently there are 690,000 IP professionals in China, and there is a plan to increase the number to 1 million by 2025. There are 50 universities across China which have established IP colleges and there are hundreds of universities that offer IP majors with more expected to come.

China Amends Measures for Registration of Pledge on Patent Rights

China National Intellectual Property Administration (CNIPA) recently released amended Measures for the Registration of Pledge of Patent Rights as a follow up to the 14th Five-Year Plan for the Protection and Use of Intellectual Property Rights. Under the Chinese legal framework, IPR owners can pledge the property rights as security for financing and other transactions. The pledge must be legally valid and registered with the CNIPA, and the owner will no longer be free to assign or license the same without the pledgee’s consent. The amended measures mean that the CNIPA will reduce the processing time from 7 to 5 days, while the review period for online registration, modification and cancellation is reduced to 2 working days.

Registration can be made using the online platform and parties may use electronic copies of the relevant documents with the originals to follow. If the pledged patent is invalid or terminated, if the pledger failed to pay the annuity on time, or if there is a dispute about the ownership of the patent leading to a freeze in the procedures, CNIPA is obliged to notify the pledgee.

Contributing Advisors