Partial draft amendments to the Patent Act and the Trademark Act aimed at re-establishing an efficient and professional remedy system for patents and trademarks passed in the Executive Yuan on March 9, 2023. The amendments will reduce the time and cost of patent or trademark remedies, facilitate early resolution to disputes, and create a friendlier IP environment for industry development. A mechanism to manage trademark agents and ensure greater protection for trademark applicants has also been set up. A summary of the key points of the draft amendment are as follows:

1. Partial Draft Amendments to the Patent Act and the Trademark Act to Re-establish a Remedy System:

(1) Establish an independent segment to handle reexaminations and disputes

Following the example of foreign patent and trademark remedy systems, patent and trademark reexaminations and disputes will be handled by an independent Trial and Appeal Board operating under the competent authority.

(2) Re-establish a professional, efficient, and rigorous review system

To strengthen the procedural safeguards and ensure timely processing of patent and trademark dispute cases, a review panel of 3 or 5 examiners, designated by TIPO, will be established to review and decide on each reexamination or dispute case. The review process is also more rigorous as it shall include oral hearings, preliminary procedures, and appropriate disclosure of evaluation and notification of the conclusion of the review.

(3) Abolish the current process to administrative appeal review decisions

Provided that the decision of any reexaminations or disputes were made by the competent authority through a deliberation process of the highest rigor and professionalism, ensuring procedural safeguards for the parties, parties not satisfied with the review decision mayskip the current administrative appeals process and initiate legal proceedings directly with the court.

(4) Establish special reexamination and dispute lawsuits

Review decisions made by the competent authority are administrative dispute resolution proceedings for private right disputes. Any parties disputing rights should file a “dispute lawsuit” against the other party (the defendant), and civil, not administrative, litigation proceedings will apply. To simplify the remedy system and prevent ambiguity, civil litigation proceedings shall hereon apply to all cases. The court of final appeals, previously the Supreme Administrative Court, shall be the Supreme Court.

(5) Legal representation is now mandatory for dispute litigation cases

Patent litigation cases involve highly technical and legal expertise. In order to comply with amendments to the Intellectual Property Case Adjudication Act, protect the rights and interests of the parties, and promote adjudication efficiency, the new amendments stipulate that patent dispute litigation cases must be represented by a lawyer or patent agent. Trademark dispute litigation cases require high legal expertise and must be represented by an agent.

(6) The grace period for design patents has been extended to 12 months

To facilitate development of the design industry and harmonize with international standards, the grace period for design patent applications has been extended to 12 months from the current 6 months.

(7) Abolish Trademark Opposition Procedures

Currently, 97% of trademark oppositions are disputes over refusal of trademark registration, which overlaps considerably with grounds for evaluation. Therefore, the amendments will abolish the trademark opposition procedure. In addition, the grounds for absolute refusal of trademark registration will be expanded to allow "any person" to apply for evaluation, and third-party opinions can be accepted during the application examination to effectively eliminating the need for trademark opposition as a public review mechanism.

2. Amendment of Certain Articles of the Trademark Act with Regards to Regulating Trademark Agents:

(1) Added a mechanism to accelerate examination in response to urgent demands from the public to obtain trademark rights.

(2) The competent authority for trademarks is given the authority to manage registration and establish relevant management regulations in order to provide a more comprehensive set of requirements for trademark agent qualification and ensure the interests of trademark applicants.

(3) Relaxed regulations by expanding the eligible trademark applicants and simplifying both the application process for trademark registration revocation and the infringement recognition process by customs.

• Publish Date : 2023-04-17
• Update : 2023-04-17
• Organization : International Legal Affairs Office
• Visitors : 193