Provides advice on IPR protection, including information on the registration of patents and trademarks.
Several general principles are important for effective management of intellectual property (IP) rights in Taiwan. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in Taiwan than in the United States. Third, rights must be registered and enforced in Taiwan under local laws. For example, your U.S. trademark and patent registrations will not protect you in Taiwan. There is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the entire world. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer copyright protection to foreign works in accordance with international agreements.
In Taiwan, patent registrations are generally awarded on a first-to-file basis. Similarly, registering trademarks is based on a first-to-file principle. Companies should consider how to obtain patent and trademark protection before introducing products or services into the Taiwan market. For more information on which patents can be protected or for instructions on applying for patent, trademark, or copyright protection in Taiwan, please visit the Taiwan Intellectual Property Office website.
The Patent Act (PA) was amended by adding Article 60-1, which took effect on July 1, 2022. Under this Article, a generic drug company may challenge a patent holder’s drug patent validity or clarify no infringement of the drug patent when applying for a drug permit. The patent holder may also file a complaint to stop or prevent potential infringement. This PA amendment completes Taiwan’s Patent Linkage System, which began in August 2019.
It is vital that companies understand that intellectual property is primarily a private right and that the U.S. government cannot enforce rights for private individuals in Taiwan. It is the responsibility of rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. While the
U.S. Government stands ready to assist, there is little that the U.S. Government can do if the rights holders have not taken fundamental steps necessary to secure and enforce their IP in a timely fashion. In no instance should U.S. Government advice be seen as a substitute for the responsibility of a rights holder to promptly pursue its case. Companies may wish to seek advice from local attorneys or IP consultants who are experts in Taiwan law. The American Chamber of Commerce in Taipei can provide a list of local lawyers on request.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully, however, whether or not to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. As a result of such risks, projects and sales in Taiwan require constant attention.
Small and medium-size companies should work with trade associations and organizations to support efforts to protect IP and stop counterfeiting. Some Taiwan and U.S.-based IP-related organizations include the following:
- American Chamber of Commerce Taiwan
- Asian Coalition Against Counterfeiting and Piracy (ACACAP)
- Biotechnology Innovation Organization (BIO)
- International Anti-Counterfeiting Coalition (IACC)
- International Federation of the Phonographic Industry (IFPI) (via its Taiwan office, the Recording Industry Foundation in Taiwan)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- Motion Picture Association (MPA)
- Motion Picture Association of America (MPAA) (via its Singapore office)
- National Association of Manufacturers (NAM)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- U.S. Chamber of Commerce
In any foreign market, companies should consider several general principles for effective protection of their intellectual property. For additional background, please follow the links to our article on Protecting Intellectual Property and Stopfakes.gov or contact ITA’s Office of Standards and Intellectual Property Director, Stevan Mitchell, at Stevan.Mitchell@trade.gov.
IP Attaché Contact for Taiwan Michael Mangelson
Principal Counsel and Director for China, Taiwan and Mongolia Office of Policy and International Affairs
Tel: (571) 270-0457
U.S. Patent and Trademark Office (USPTO) USPTO Madison Building
600 Dulany Street, Alexandria, VA 22314
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- For information about patent, trademark, or copyright issues – including enforcement issues in the United States and other countries – call the STOP! Hotline: 1-866-999-HALT.
- For more information about registering trademarks and patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO): 1-800-786-9199.
- For more information about registering for copyright protection in the United States, contact the U.S. Copyright Office: 1-202-707-5959.
- More information on obtaining and enforcing intellectual property rights and market-specific IP toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and also contain contact information for local IPR offices abroad and U.S. government officials available to assist SMEs.
To access Taiwan’s ICS, which includes information on the protection and enforcement of intellectual property rights, visit the U.S. Department of State Investment Climate Statement website.