Taiwan Update: New IP amendments aimed at CPTPP accession

Taiwan has passed new amendments to its key intellectual property laws to help in its efforts to join the regional CPTPP trade agreement.

On 15 April 2022, Taiwan’s Legislative Yuan passed a number of amendments to its main intellectual property rights (IPR) laws to help Taiwan’s efforts to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) free trade agreement. The CPTPP is a trade initiative that survived from the Trump-presidency withdrawal from the TPP signed by the Obama administration in early 2016. Current signatories include Japan, Singapore, Malaysia, Vietnam, New Zealand, Australia, Canada, Mexico, Peru and Chile, and Taiwan applied to join last September.

The CPTPP’s intellectual-property provisions build upon the WTO’s Agreement on Trade-

Related Aspects of Intellectual Property (TRIPS Agreement) and add provisions covering pharma products, domain-name cybersquatting, and theft of trade secrets.

1. Trademark Act amendments

• The original Article 70.3 of the Trademark Act regarding acts of trademark infringement has been moved into Article 68 and revised to: “For the own use or for the other’s use of the goods or service identical or similar to the registered trademark based on marketing purpose without trademark owner’s consent, the manufacturing, selling, possessing, displaying, exporting or importing labels, tags, packaging, containers or items relating the service identical or similar to the registered trademark would infringe trademark rights as well.” The original “knowing” requirement in the preparation behavior is deleted to more-broadly include both “deliberately” and “negligently” as possible infringement types.

• The criminal liability for contributory infringing behaviour is further added to Article 95 of the Trademark Act to punish “deliberate” contributory conduct in the trademark infringement.

2. Copyright Act amendments

• Since optical-media discs (CDs, DVDs, CD-ROMs, etc.) are no longer the main format used in copyright infringement, legislators decided to treat the infringement by disc no differently from others. The original Article 91.3, 91-1.3, 98, 98-1, of the Copyright Act are therefore deleted.

• To comply with the CPTPP, Article 100 of the Copyright Act is amended to include the following behaviours that infringe upon the whole paid copyright work and cause the copyright owner damages of NT$1 million or more, subject to the state prosecution without requiring the rights holder to file a complaint:

1. Reproduction of a copyrighted work without authorization in a digital format.

2. Public display or possession of an unauthorized copy of a copyrighted work with the intent to distribute such work in a digital format.

3. The public recitation, broadcast, presentation, performance, transmission, display behaviour stipulated in Article 92 of the Copyright Act.

In our analysis, we think rights holders may have some more options to combat p2p transmission and copying where the transfer is complete and the damages to the copyright owner are NT$1 million or more.

3. Patent Act amendments

• Article 60-1 of the Patent Act is newly added: “If the drug permit applicant declares, pursuant to Article 48-9.4 of the Pharmaceutical Affairs Act with regard to the patent rights of the approved new drug permit owner, the patent right owner may stop or prevent such infringement pursuant to Article 96.1 after receiving the notice from the Ministry of Health and Welfare (MOHW). If the patent right owner doesn’t file litigation against the applicant mentioned above within the time designated in Article 48-13.1 of the Pharmaceutical Affairs Act, the applicant may file litigation to confirm if the drug of the applied drug permit does or doesn’t infringe the patent rights.”

• If the patent right owner fails to file the above litigation within 45 days after the receipt of the notification, the MOHW may issue the drug permit, pursuant to Article 48-13 of the Pharmaceutical Affairs Act.

• The above Patent Act was amended to reflect the spirit of the US Hatch-Waxman Act introduced by the amendment of the Pharmaceutical Affairs Act back in 2018.

By Eiger, Taiwan, a Transatlantic Law International Affiliated Firm.

For further information or for any assistance please contact taiwan@transatlanticlaw.com

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