TIPO to review IP legislation following conference on covid-19 patent reforms

On 17 June 2020 the head of the Taiwan Intellectual Property Office (TIPO), industry leaders and IP experts met to discuss potential changes to the patent and trademark litigation regime and other reforms to Taiwan’s IP environment.

During the invitation-only conference, which was held by the Chinese National Federation of Industries (CNFI), attendees discussed best IP practices and Taiwan’s IP strategy. The conclusions from the event will be published as part of the CNFI’s annual white paper.

Covid-19-related global patent research assistance

TIPO has launched an online tool to conduct covid-19 related patent searches in the Global Patent Search System. This has 14 categories (including masks, thermometers, protective clothing, ventilators, testing kits and vaccines, among others) and contains quick links and tools to facilitate one-click global patent searches. Details of TIPO services to fight against covid-19 have been released on section of its website devoted to IP rights related to covid-19.

Potential changes to patent and trademark litigation regime

At the conference, TIPO’s director general read out a report stating that a change in IP dispute resolution had been discussed among sections of government. Under the current legal system, any party can file an invalidation action with TIPO, which then makes its decision to either reject the action or revoke the patent at issue. If the patentee or the challenging party is not satisfied with the decision, it can file an appeal, which then comes before the administrative courts. In this kind of litigation, TIPO is the defendant; the plaintiff is the patentee or the challenging party.

It is the general consensus among many industries that litigation with regard to invalidation is better when held between a patentee and the challenging party (ie, the adversarial system), rather than TIPO being the defendant. However, changing this would mean altering the existing trial system. The relevant government departments (ie, the administrative division and the civil division of the Judicial Yuan and TIPO) are now evaluating this procedure, taking into account the comments and proposals from various industries.

AI, 5G and emerging technologies

AI is set to play an important role in intellectual property in both the public and private sector. TIPO, the Science and Technology Policy Research and Information Centre and the Industrial Development Bureau of the Ministry of Economic Affairs, among other institutes, have launched projects to advance IP examinations, tech and IP market research and promote IP management. For example, the Securities and Futures Bureau of the Financial Supervisory Commission now includes IP management as an index in a company review and evaluation of leadership of public-listing companies.

Further, at the conference, industry leaders, which included representatives of the Information and Communication Technology industry, shared their experiences of promoting AI, 5G and other emerging technologies, including patent-drafting tactics and planning IP protection. As a result, TIPO is now reviewing and drafting revisions to the Patent Examination Guidelines of Software-related Inventions, a version of which is expected to be released at the end of 2020.