Taiwan passes IP amendments to support its CPTPP application

On 15 April 2022, Taiwan’s Legislative Yuan passed amendments (2022 Amendments) to the Patent Act, the Copyright Act and the Trademark Act in support of the country’s application to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP).

Patent Act: strengthening the patent linkage system

In 2019, Taiwan established a patent linkage system through amendments to the Pharmaceutical Affairs Act – the 2022 Amendments will add provisions to the Patent Act to enhance this. The CPTPP requires member states to provide a mechanism to help resolve infringement disputes between patent owners and generic drug firms before a generic drug enters the market. Thus, the 2022 Amendments stipulate the legal basis for a patent owner to file a lawsuit against a generic drug firm whose product allegedly infringes its patents. However, they also protect the interests of generic firms where a patent owner fails to file an infringement lawsuit within a designated period – the 2022 Amendments allow firms to initiate proceedings petitioning the courts to render a declaratory judgment confirming that the generic drug does not infringe the owner’s patent.

Copyright Act: changing legal effects to match current trends

Under the current Copyright Act, if a person copies a copyrighted work without authorisation and stores the unauthorised copy on an optical disk (or distributes that disk), they will face criminal penalties more severe than those for similar copyright offences not involving optical disks. When increasing criminal liability for offences involving optical disks, the former legislature considered that using disks to copy and distribute copyrighted works without authorisation had become such a common and harmful practice that it needed to be strongly deterred. In recent years, however, the use of disks as a medium to store data or other content has fallen. The 2022 Amendments thus remove the provisions imposing enhanced penalties upon offences involving disks from the Copyright Act.

In addition, the 2022 Amendments allow law enforcement officers to investigate copyright offences actively, without the need for a formal complaint from copyright owners in certain circumstances. This signals the government’s determination to tackle copyright piracy. According to the amendments, prosecutors may indict a copyright offender ex officio, provided that the following requirements are met:

• the infringed copyrighted work was acquired by payment;
• the unauthorised copy is identical to the copyrighted work; and
• the offence causes loss to the copyright owner of at least NT$1 million.

Trademark Act: enhancing the protection of marks

The 2022 Amendments add provisions to the Trademark Act, making it a criminal offence if a person copies, without proper authorisation, another’s label carrying a registered trademark. Criminal liability will apply not only to a perpetrator who actually commissions the copying but also to accomplices and accessories.

Another notable development is that the 2022 Amendments remove the “actual knowledge” element from the requirements for trademark infringement. Instead, criminal liability for trademark infringement will merely require intent. Similarly, there will be civil liability for trademark infringement when the infringing conduct is intentional or negligent. In future, Taiwan courts will no longer have to determine that a defendant had actual knowledge to convict them of criminal trademark infringement or hold them liable for civil trademark infringement.

The 2022 Amendments will help Taiwan to meet the requirements set out in Chapter 18 of the CPTPP Agreement. Once promulgated, they will have a significant impact on Taiwan’s IP laws and practice.