Third draft amendments to Patent Act and Trademark Act submitted to Executive Yuan for deliberation
For promoting the amendments with respect to “adversarial system and consolidated remedy procedure”, the Taiwan IPO commenced a period of public comments for the second draft amendments to partial provisions of both the Patent Act and Trademark Act in June 2021 with part of the feedback and comments given being consolidated into the draft amendment. Also due to the Judicial Yuan’s proposed amendment to the Intellectual Property Case Adjudication Act, further adjustments have been made and consolidated in the third draft amendments to the two Acts to be submitted to the Executive Yuan for deliberation on April 19, 2022.
The third draft amendments to the Patent Act and the Trademark Act each include 76 articles and 54 articles, respectively. The major differences between the second draft amendment and the third draft amendment are summarized as follows.
1. Supportive measures of remedies for civil disputes over ownership of right to apply for patent and patent right
(1) The suspension period introduced in the 3rd draft amendment is to establish a provisional remedy proceeding that ensures the actual patent owner can resolve patent right disputes through civil remedies. The suspension period is set for three months in consideration of current court practices, and the patent authority will resume the pending procedures upon expiration of the three-month period. Under the amendment, for the dispute arising from the ownership of right to apply for patent and patent right, although a party to the dispute may show evidence to prove a provisional injunction or an injunction maintaining a temporary status quo being granted by the court so as to request for suspension of Taiwan IPO’s examination, review, and other relevant procedures that would affect or change the ownership of the patent application or patent concerned, the parties to the dispute should still try to obtain a ruling granted by the court as soon as possible with a view to ensuring its rights and interests.
(2) Also in order to ensure that the nominal patent owner will not abandon in bad faith the patent right in dispute before resolution of the dispute, the third draft amendment adds provisions that the patentee shall not abandon the patent right in dispute before a final and binding judgment is rendered by the court, a mediation settlement is reached or arbitration proceedings is concluded.
2. Mandatory legal representation in patent and trademark review and dispute litigation
In view of the expertise required in patent and trademark litigation and for the sake of efficiency enhancement of litigation and also by reference of the amendment to the Intellectual Property Case Adjudication Act that requires representation by attorneys-at-law in IP-related civil cases, the third draft amendment sets forth that legal representation by attorneys-at-law is required for patent or trademark review litigation and dispute litigation; that is, the parties to the litigation and the interveners are legally required to retain attorneys-at-law or patent attorney to represent them in litigation. Also, as provided in the Intellectual property Case Adjudication Act, the relevant provisions governing IP-related civil matters shall apply mutatis mutandis to the matters regarding the effect of litigation aid, litigation act and remunerations.
3. Regulations for introduction of new evidence in patent or trademark dispute cases
In order to take into consideration of the particularity of patent or trademark dispute cases and to enhance remedy efficacy at the same time, it has been agreed after coordination with the Judicial Yuan that submission of new evidence in dispute lawsuit shall be governed by the Intellectual Property Case Adjudication Act. (Released 2022.04.25)