ALIPO IP ATTORNEYS

Chia-Wen (Justin) Chao

To facilitate Taiwan in joining the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP), the Pharmaceutical Affairs Act coming into force on Aug. 20, 2019 in Taiwan has incorporated patent linkage. Earlier, the TIPO started to draft amendments to the Patent Act, the Trademark Act and the Copyright Act in 2016 with the attempt to close the gap between the Trans-Pacific Partnership (TPP) Agreement, the predecessor of the CPTPP and the IP-related laws in Taiwan. This year, on Jan, 20, the draft amendments to the Trademark Act and the Copyright Act were approved and adopted by the Executive Yuan in the 3787th Cabinet Meeting, and will be further reviewed by the Legislative Yuan soon. The draft amendments to the Patent Act are still pending and will be further examined in a separate cabinet meeting of the Executive Yuan. 

I. Wrap-up of the draft amendments to the Trademark Act:

(1) To align with the provision set forth in Article 18-74 of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership that the subjective element of civil liability for trademark infringement is “knowing, or with reasonable grounds to know,” a proposed amendment is to delete the word “knowing” from the subjective element of civil liability for infringement acts such as counterfeiting trademark labels form corresponding article of the Trademark Act in force. This proposed amendment will return the nature of the provision of the Trademark Act to general civil liability by changing the subjective element from “direct knowing” to “knowing or negligence”.

(2) To answer to the provision of Article 18.77(3) of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, a proposed amendment to the Trademark Act is to augment the penalty provision against acts of counterfeiting labels or packaging identical to, or cannot be distinguished from a protected trademark/collective membership mark and using the counterfed labels or packaging in goods or services the same as the trademark/ collective membership mark is used for on a commercial scale. This amendment is to provide penalty for preparation and contributory Infringement about importing counterfeited trademark labels and packaging, so as to be supportive to sales and profits of proprietors of registered trademarks, and enhance trademark protection. Additionally, in view of the increasing marketing and transactions over the Internet, a proposed amendment expressly prescribes that the provision shall also apply to infringements conducted through electronic media or the Internet. 

(3) In order to echo to the provisions set forth in Article 18.77(3) of Comprehensive and Progressive Agreement for Trans-Pacific Partnership about punishment for intentional acts, it has been proposed to remove the subjective element of “knowing” and add provisions that punish import behaviors about counterfeited certification marks, labels, and packaging. For the punishable behaviors of counterfeiting certification marks label, selling or behaviors due to an intent to sell infringing goods made by others as recited in the provisions in force, “knowing” is to be deleted form their subjective elements, thereby returning the element of criminal penalties to “intentional.” This will include indirectly intentional behaviors with foreseeable infringement, so as to promote social justice and meet public expectation. 

The aforementioned proposed amendments are made to Articles 68, 95, 96, and 97 of the Trademark Act. 

II. Wrap-up in the draft amendments to the Copyright Act:

(1) Since the CPTPP has empowered the competent authorities to take legal actions against copyright piracy and distribution on a commercial scale, for both the crime of reproduction for the intention of rental or lending with the intention of making profits as recited in Article 91(2) and the crime of distribution of a reproduced article with the knowledge that it infringes copyrights as recited in Article 91(1)-2, where the reproduced article is of a digital format, the proposed amendments are to change the nature of these crimes into indictable crimes that are prosecuted ex officio. Additionally, in view that network piracy increases with the rapid development of digital technologies, the crime of infringing the rights on public transmission as recited in Article 92 of the act is to be changed to an indictable crime, with the attempt to effectively defer copyright infringement in the digital environment. 

(2) Since CDs/DVDs have faded out from the market and are no longer the major forms of infringement, as well as that the amended Article 100 has covered digital piracy including pirated CDs/DVDs, the provisions about aggravation of punishment as an indictable crime for reproduction and distribution of pirated CDs/DVDs are to be deleted, thereby returning the nature of the punishment for crimes about general reproduction and distribution, and the corresponding provision involving confiscation is to be deleted. 

(3) Serious infringement related to illegal digital piracy, distribution and public transmission are to be redefined by three elements: “infringing works provided by others with compensation,” “reproducing with complete fidelity,” and “causing a damage to the rights holder that reaches one million NT dollars or more, “so as to enhance protection to copyright owners. 

The aforementioned proposed amendments involve deletion of Articles 91(3), 91(1)-3, 98, and 98(1) of the Copyright Act in force and partial changes in Articles 91, 91(1), 98, 98(1), and 100. 

Remark

As the Pharmaceutical Affairs Act has incorporated patent leakage, and the Intellectual Property Office is of the opinion that corresponding adjustment shall be made to the Patent Act for consistency. For this reason, a draft amendment to Article 60(1) of the Patent Act was submitted to the Executive Yuan on Mar. 17, 2020 to be examined in the coming cabinet meetings. The summary of the proposed amendment is:

It is expressly prescribed that to an applicant applying for a generic drug permit and stating not to infringe the patent rights of a new drug or stating that the patent rights of a new drug shall be revoked, the rights holder of the new drug may initiate patent infringement litigation in the examination process of the generic drug. In the event that the rights holder fails to initiate litigation, the applicant of the generic drug permit may request for declaratory judgment instead.