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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 IP practitioners... [more]

IP practitioners in Taiwan received exciting news in 2010 – the signing of the Cross-Strait Economic Cooperation Framework Agreement (ECFA) and the Cross-Strait Intellectual Property Right Protection Cooperation Agreement (the IP Agreement). Both agreements were signed on June 29 2010 and took effect on September 12 2010. Key provisions of the IP Agreement include mutual recognition of priority claims for trade mark, patent and plant variety, cooperation across the straits in patent searches and examinations, and the establishment of collaborative enforcement mechanisms.

They were the most important development in IP last year. Many believe they could bring in more business, as Taiwanese companies might file more applications now that the two straits recognise priority claims. In addition, the signing of ECFA gives more incentive to industry in China and Taiwan to cooperate, and Chinese enterprises may increase their investment in Taiwan. "As the relationship of the two straits becomes better and closer, enterprises put them together when planning their business and IP strategies," explains a partner. Taiwanese IP firms have been actively developing the China market. A number of them have representative offices in China and plan to allocate more resources there.

Practitioners are also positive about the growth of litigation work and many IP boutiques that used to focus more on prosecution have been beefing up their litigation practices, thanks to the establishment of the IP Court in 2008: "The number of patent litigations is going up slowly and the IP Court is the key contributor behind this. I expect more patent owners to notice this new forum," notes a litigator. Yet, some warn that companies should be careful when deciding which strategies they should employ as the patent invalidation rate is quite high. "The IP Court is not that favourable to plaintiffs," observes a partner, adding that many companies tend to opt for a settlement instead of carrying the proceedings further to avoid the risk.

Nonetheless, the Court has indeed driven the development of the local IP market. "The trend now is that lawyers are introducing US cases and precedents as references in litigations. This is a good trend as it can accumulate expertise and experience in a single court," says one lawyer. Another agrees that Taiwan is "on the right track in having a specialised IP Court". The government continues to put resources into the Court and its latest adjustment addresses one concern observers had previously. From January onwards, three new judges have joined to work on first instance cases and judges will be divided into two groups to work on first and second instances cases respectively – a response to its high rate of rejection or dismissal of appeals due to cross-referencing between judges.