For purposes of assisting countries lacking pharmaceutical production ability or with inefficient pharmaceutical production ability to obtain pharmaceutical(s) needed in treating AIDS, tuberculosis, malaria, or other infectious diseases, the Patent Authority shall, upon application, grant compulsory licensing to practice a patent concerned so as to supply the required pharmaceutical(s) imported into the said countries.

        An application for compulsory licensing filed in accordance with the preceding paragraph shall be accepted only if the applicant fail to reach an licensing arrangement with the patentee concerned within a considerable time period based on reasonable commercial terms and conditions proposed thereto; however, the above shall not apply if compulsory licensing for the required pharmaceutical(s) has been granted in any of the importing countries.

If the importing country concerned is a member to the World Trade Organization (WTO), the applicant, when filing an application according to Paragraph 1, shall submit evidentiary documents proving that the importing country has fulfilled the following:

1. The Council for Trade-Related Aspects of Intellectual Property has been notified of the name(s) and the quantity of the required pharmaceutical(s).

2. The Council for Trade-Related Aspects of Intellectual Property has been notified of the fact that the said country is willing to import pharmaceuticals due to its having no production ability or having in sufficient production ability.  However, such evidentiary document(s) is (are) not needed if the importing country is a less developed country.

3. The required pharmaceutical(s) is (are) not patented in the importing country, or there exists a patent but compulsory licensing of such patent has been granted or is to be granted.

        The so called “less developed countries” mentioned in the preceding paragraph refers to countries formally announced by the United Nations (UN) as less-developed countries.

        If the importing country is not a member state to the WTO, but is a less developed country or is a country without or lacking pharmaceutical production ability, when submitting an application for compulsory licensing according to Paragraph 1, the applicant shall submit evidentiary documents proving that the importing country has fulfilled the following conditions:

1. The name(s) and quantity of the required pharmaceutical(s) has (have) been filed in writing with the Ministry of Foreign Affairs of the ROC; and

2. A consent has been made to prevent further export of the required pharmaceutical(s).

Our comments: This Article is added in order to relax the limitation of exporting and importing the pharmaceuticals with compulsory licenses of patent rights. So that, the countries lacking pharmaceutical production ability or with inefficient pharmaceutical production ability can obtain pharmaceutical(s) needed under such assistance.

        Pharmaceutical(s) produced under compulsory licensing granted in accordance with the preceding Article shall be exported to the importing country entirely, and the licensed production quantity shall not exceed the quantity reported by the importing country in its notice sent to the Council for Trade-Related Aspects of Intellectual Property or the Ministry of Foreign Affairs of the ROC.

        Pharmaceutical(s) produced under compulsory licensing granted in accordance with the preceding Article shall be marked with the basis of the licensing on the external packaging thereof in accordance with to the direction specified by the Patent Authority; the packaging, color or shape of the pharmaceutical(s) produced under compulsory licensing grant shall be sufficiently distinguishable from pharmaceutical(s) produced by the patentee or its licensee(s).

A licensee of a compulsory licensing grant shall pay appropriate compensation to the patentee. The amount of compensation shall be decided by the Patent Authority according to the economic value of the patent covering the required pharmaceuticals in the importing country with reference to the human resource development index issued by the United Nations Before exporting the pharmaceutical(s) manufactured under a compulsory licensing grant, the licensee of such compulsory licensing shall publish in the website concerned the quantity, name(s) and destination(s) of such pharmaceutical(s), as well as distinguishable features of the pharmaceutical(s).

        Inspection and registration of the pharmaceutical(s) produced and exported under compulsory licensing grant in accordance with the preceding Article shall be governed by Item 2, Paragraph 2, and Article 40 of the Pharmacy Law.

Our comments: This Article is added to regulate important rules to the licensees of such compulsory licensing in order to not only avoid overproducing the licensed pharmaceutical(s) demanded by the importing country, but also avoid confusion between the pharmaceutical(s) produced under compulsory licensing and the pharmaceutical(s) produced by the patentee or his/her licensee(s).

        If the annuity for the second or any subsequent payment year is not paid within the original time limit, a late payment can be made within six (6) months from the original due date with an additional 20% late penalty per month elapsed, up to a maximum of one hundred percentage (100%) of the annuity amount originally due. 

        Payment of additional annuities based on the specified percentage as stated in the preceding Paragraph means that additional annuities will be needed on a monthly basis depending on the time period elapsed from the original due date.  For each month elapsed, an additional fee at a ratio of 20% is needed with a maximum of additional fee which is same as the amount originally due.  The time period elapsed is between one day and one month, the time period elapsed shall be deemed one month.

Our comments: According to the present Patent Act, the late penalty is one hundred percentage (100%) of the regular amount of the annuity, no matter the time period elapsed is one day or five months. The payment of additional annuities increased pro rata will conform to the proportionality more.

        With respect to a party infringing on an invention patent, the patentee may demand a removal of infringement.  In the event of a threat of infringement, the patentee may demand a prevention of infringement.

        In the case of infringement of an invention patent due to intent or negligence, the patentee may claim for damages suffered thereby.

        When making a demand pursuant to Paragraph 1, the patentee may request for a destruction of the infringing articles or the raw materials or implements used in infringing the patent, or request for other necessary disposals. 

        An exclusive licensee may, within the licensed scope, make demands in accordance with the preceding three paragraphs.  If it is otherwise provided for in an agreement, such agreement shall prevail. 

        In the case of infringement of an inventor's right to have his/her name indicated, the inventor may request to have his/her name be indicated or to take other actions necessary to recover his/her reputation.

        The right to seek remedy as provided for in Paragraph 2 and the preceding paragraph shall become extinguished if it is not exercised within two (2) years from the date on which the patentee becomes aware of the damage and the obligator liable for making compensation for the damage.  This right shall also become extinguished if it is not exercised within ten (10) years from the date of committing the infringement act.  

Our comments: This amended Patent Act explicitly stipulates that it is enough for a patentee to demand a removal and prevention of an infringement of a patent when there is a fact or a threat of infringement on his/her patent objectively. On the other hand, a patentee may claim for damages suffered from an infringement of his/her patent under the condition that the infringement is caused due to the infringer’s intent or negligence subjectively.

        When claiming for damages in accordance with the preceding Article, the damages can be calculated according to any of the following methods:

1. to claim in accordance with Article 216 of the Civil Code; however, if no other method can be presented to prove the damage suffered, the owner of the invention patent may claim damages based on the amount of the balance derived by subtracting the profit earned through practice of the patent after infringement from the profit normally expected through practice of the same patent;

2. to claim on the basis of the profit earned by the infringer as a result of patent infringement.

3. to claim on the basis of the amount equivalent to the amount of royalty that can be collected from the practice of the invention patent under patent licensing.

Our comments:  Because it is often difficult for a patentee to prove the damage suffered, this Article is amended to reduce the burden of the patentee on this matter.

        We will continue introducing main and practical points of the amendment in succession in our Newsletter in the following issues.  

(Source: TIPO News dated December 15, 2009)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4199) 

The classification of the “real estate and property auctioneering service” in Taiwan is different from that in the United States, i.e. I.C. 36 in Taiwan while I.C. 35 in the U.S.

       In one of our recent cases, a trademark application was filed in Taiwan together with claiming the priority date of its corresponding US trademark application in Class 35, in which “Real estate and property auctioneering service” was one of the designated services.   However, at the examination stage, the item “Real estate and property auctioneering service” was required to be moved into Class 36 with the payment of additional official fee according to the practice in Taiwan, although this item was classified in class 35 in its parent US trademark application.

       We will continue introducing main points of the amendment in succession in our Newsletter in the following issues.

(Source: TIPO News dated March 10, 2010)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4383)