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At-a-glance: Taiwan Intellectual Property Office 3/F, No. 185, Sec. 2, Hsinhai (Xinhai) Road, Da-an District, Taipei 10637, Taiwan, ROC Tel: +886 2 2738 0007, Fax: +886 2 2377 9875 Email: ipo@tipo.gov.tw Website: www.tipo.gov.tw Compared to 2011,... [more]

Compared to 2011, patent filings in Taiwan decreased where trade mark applications and copyright registrations increased. In the first three quarters of 2012 recorded domestic patent applications decreased by 4.79% while foreign applications increased by 4.16%. Trade mark applications from domestic and foreign applicants meanwhile increased by 4.79%.

The Taiwan Intellectual Property Office (TIPO) attributes the general decline in patent activity to the global economic slowdown, and identifies increasing interest from foreign industries in strengthening their portfolios and innovative technologies in Taiwan.

Practitioners are quick to identify the biggest IP developments in the past year since all the major IP laws were subject to revision. Amendments to the Trademark Act were passed by the Legislative Yuan on May 31 2011, effective July 1 2012. The Patent Act was revised and took effect January 1 2013. The much anticipated Trade Secrets Act was promulgated on October 25 2012. The Copyright Act is also under review.

The changes have been largely welcomed; one partner noted that "because they're new, they create uncertainty". She explained: "I think everyone will need some time to adjust."

The new trade mark law provides more comprehensive protection and has revised procedures to eliminate the problem of backlog applications. The law, for instance, removed the two-instalment payment option for trade mark registration fees.

Other notable changes include enlarging the scope of what can be registered as a trade mark – motion marks, holograms and different types of non-traditional marks are now included.

"In my experience, because these categories are so new only a certain type of mark ends up being registered; the IP Office still prefers to register more traditional marks, but at least this is now available," says a lawyer.

Some practitioners have raised concerns over the lack of supplementary regulations to provide guidance on how TIPO will examine these new trade marks.

Another change is that if a party brings an invalidation or revocation action, the trade mark applicant or holder must prove they have used their trade mark for three years or longer. If they cannot, the applicant must be able to provide valid reasons for non-use.

Rights holders are also scrambling to respond to the new patent law.

"The new patent law was passed last year but does not take effect until January 1 2013, so for 2012 everyone was busy preparing, including our patent office," remarks one Taiwan IP practice head.

The high volume of changes made to the new patent law has contributed to the lag between its passage and effective date. The new Act has 159 articles, 108 of which are revised provisions. The Patent Office has been busy preparing regulations to ensure a smooth transition.

Ted Su of Wood & Wu Patent and Trademark Office explained: "For all patent applications, things will get more complicated procedurally. Selections of responses are restricted after receiving a final office action from examiners, according to the new Patent Act. We will have to do things much more quickly and clearly to get a favourable final decision from the examiner."

While the patent and trade mark revisions have attracted mixed reactions, practitioners are collectively excited for the trade secret amendments.

The amendments introduce for the first time criminal liability for misappropriation of trade secrets, punishable with imprisonment up to 10 years and a fine amounting to NT$10 million ($335,000) or more in certain circumstances.

TIPO released a statement saying that the purpose of amending all the major IP laws was to be more compliant with international standards and to expand protection. "Generally, the changes are good," explained Peter Dernbach of Winkler Partners. "The Taiwan Intellectual Property Office recognises that enforcement will be good for the economy."