The Committee appreciates the Taiwan authorities’ willingness to engage in productive dialogue, increase cross-agency cooperation to protect intellectual property rights, and prevent illicit transfers of core technologies.

However, further steps are necessary to ensure solid protection of intellectual property. We see limited improvement in perennial issues of great concern to several industries, especially pertaining to copyright, trade secrets, and patent protection. Below, the Committee presents suggestions for improvement and looks forward to strengthening cooperation between industry and the authorities.

Suggestion 1: Amend the Copyright Act to bolster Taiwan’s soft power.

1.1   Extend the term of copyright protection to 70 years. A 70-year copyright protection term has become the international norm. Currently, more than 87 countries and regions have extended their respective terms of copyright protection to at least 70 years, including 29 out of 32 OECD members, all EU member states, and regional neighbors such as Japan, Singapore, and South Korea. In the United States, copyright protection for authored works lasts throughout the life of the author plus another 70 years, while other works enjoy protection of 95 years from the year of first publication or 120 years from creation.

Extending the copyright protection term would provide a crucial incentive for creativity, not only benefiting Taiwan’s cultural, creative, and software industries but also helping to stimulate the economy. The “rule of the shorter term” in standard international copyright treaties limits the copyright protection term for any given work to the duration applicable in the work’s country of creation. In line with that principle, increasing Taiwan’s copyright duration term would ensure that works produced in Taiwan are not discriminated against in countries where other works might enjoy longer copyright protection terms based on local laws.

Given the government’s repeated emphasis on developing Taiwanese soft power, it should immediately amend the law to increase the competitiveness of Taiwan’s cultural and creative industries. The Committee recommends amending the Copyright Act to extend the term of copyright protection of Taiwanese works to at least 70 years after the death of the author or to 95 years after the first date of publication when applicable (for example, works made for hire or created by an anonymous author).

1.2   Implement effective measures to deal with online infringement. The problem of online infringement by overseas-based sources is a longstanding issue that remains unresolved. Digital piracy often originates overseas, where online tools such as over-the-top platforms (OTT), point-to-point/BitTorrent services, blogs, and websites can be easily misused to access protected content in Taiwan.

For example, media boxes, set-top boxes, and their corresponding software applications are increasingly used to facilitate various forms of piracy, including stream-ripping. Pirate OTT devices simplify the process for unsophisticated users to connect to foreign piracy sites, gaining access to unauthorized copyrighted content. This issue presents a major concern for rights-holders doing business in Taiwan, as Taiwan still lacks an adequate legal framework to effectively regulate infringing websites, platforms, and applications originating overseas.

Rights-holders continue to face significant challenges in enforcing their rights against infringers, especially when domain name registrars and infringers are not physically located in Taiwan. Although some infringing sites may be based overseas, a significant amount of infringing activity occurs within Taiwan. This situation provides a local nexus for action and an opportunity for Taiwan to collaborate with other countries in addressing cross-border infringement. Without such cooperation, Taiwan risks falling behind as many other nations work together to protect intellectual property within their jurisdictions.

The Committee therefore continues to urge the government to utilize every available measure to tackle online piracy as soon as possible, including remedying shortcomings in the current legal framework. Measures could include strengthening the enforcement measures surrounding issuing Domain Name System Response Policy Zone (DNS RPZ) seizure orders and by collaborating with foreign courts to locate the operators behind infringing websites.

1.3   Provide sound recording rights-holders with exclusive copyrights. The copyright bill proposed by the Executive Yuan in 2022 was automatically withdrawn after the Legislative Yuan’s re-election in January 2024. The draft amendments proposed in that bill did not favor copyright holders, as they failed to grant any new rights to sound recording rights-holders. Sound recordings are still denied the exclusive public performance rights provided in many other jurisdictions (such as Australia, Brunei, Hong Kong, Malaysia, Thailand, the United Kingdom, and many EU countries). In this regard, the proposed draft amendments would still have failed to advance copyright protection in Taiwan.

Sound recordings have been treated as a copyrighted “work” from the very beginning of the copyright system established by the Copyright Act in 1928. However, Taiwan does not adopt a “neighboring rights” system.

Like other creative activities, the production of sound recording producers requires a great deal of effort. However, over many years the government has continued to deny the originality of sound recordings and afforded them insufficient protection, while inaccurately stating that the current Copyright Act grants sound recordings a level of protection that exceeds the global standard. This discrimination and unfair treatment toward the recording industry creates the impression that sound recordings are works of lower value, which contravenes the spirit of the national policy to revitalize Taiwan’s cultural and creative industry.

To ensure that sound recordings are afforded the same protection as literary, musical, dramatic, or choreographic works, the Committee suggests adding “producers of sound recordings” to those listed in the first paragraph of Article 26 as enjoying “exclusive right to publicly perform their works,” joining “authors of oral and literary, musical, and dramatic/choreographic works.”

Suggestion 2: Allow complainants, plaintiffs, and defendants access to court files in trade secret cases.

This year’s amendment to the Intellectual Property Case Adjudication Act has helped expedite the trade secret trial system. To further enhance this system, the Committee urges the Judicial Yuan to enact related regulations that will optimize and accelerate the efficiency of case adjudication.

In trade secret cases, complainants, plaintiffs, and defendants currently lack quick access to court files after indictment. The court usually hesitates to reveal sensitive case files to involved parties, but delayed access severely damages the parties’ rights to speedy adjudication and causes major delays. Although the Committee last year made the same suggestion in favor of speedy access, there was no active progress on this issue.

Now the newly amended Intellectual Property Case Adjudication Act seeks to address inefficiencies caused by delayed applications for confidentiality preservation orders by introducing new legal mechanisms such as limitations on court file review, but they are not reflected in the Directions on District Courts’ Handling of Trade Secret Cases, the Directions on Courts’ Handling of Confidentiality Preservation Orders, or the Regulations on Document Review and Private Trial for Trade Secret Cases in Court. As a result, the file access system remains inefficient, as parties are only able to access investigation case files after a year or more.

The Committee respectfully suggests that the Judicial Yuan adopt clear regulations regarding access to trade secret court files, guiding judges to effectively place confidentiality preservation orders and limitations on court file review, or establish other mechanisms that allow complainants, plaintiffs, and defendants to quickly access court files. Furthermore, the Committee suggests that case files be made unconditionally available to licensed attorneys serving as outside counsel, in the interest of enhancing the efficiency of case proceedings. For these outside counsels confidentiality preservation orders should be issued swiftly without condition to facilitate and expedite proceedings and enhance trade secret protection.

The Committee hopes to play an active role in optimizing trade secret trials by enhancing trial efficiency and protecting local industries, and respectfully suggests that the Judicial Yuan invite industry representatives to participate in developing and drafting relevant regulations.

Suggestion 3: Set clear standards for the patent term extension of pharmaceutical patents in line with international norms.

3.1   Recognize the “report date” in a clinical trial report as the “end date” of a foreign clinical trial when calculating patent term extensions. In Taiwan, the patentee of a pharmaceutical or agrichemical patent is entitled to request a patent term extension (PTE) of up to five years in accordance with Article 53 of the Patent Act. Article 4 of the Regulations Governing the Determination of Patent Term Extension provides that the allowable time periods in a PTE request include the period of domestic or foreign clinical trials and the examination period for domestic regulatory approval (also known as marketing authorization).

However, a clear standard for determining the “end date” of foreign clinical trials is currently lacking. Firstly, the current approach of defining the “end date” as the “study completion date” is not applied consistently. This definition, provided under Chapter 11, Section 3.1.3.1.1, Part 2 of the Patent Examination Guidelines, is inconsistent with the Supreme Court’s definition in 2017 and 2018, which ruled that the “end date” should be “the date on which the trials results are presented.” It is also inconsistent with the Supreme Administrative Court’s two decisions in 2022, ruling that a foreign clinical trial “end date” should be determined separately by the Ministry of Health and Welfare.

Secondly, “the date on which the trial results are presented” is also not necessarily the trial “end date” either since it is impossible to draw conclusions immediately after a clinical trial is administered. For most cases, it is necessary to analyze and interpret the data professionally before assigning it any meaning and presenting the trial results. Given the complexities involved in each case, the “date on which trial results are presented” can vary. It is therefore difficult for an administrative authority to determine the “date on which trial results are presented” in every case.

Since clinical trial conclusions can only be drawn after the completion of the clinical study report, the time taken in statistical analysis, data blinding, and devising the clinical study report should be considered part of the clinical trial period. Additionally, since the “date of the clinical study report” refers to the date on which the principal investigator finalizes and confirms the trial results, we suggest adopting the “clinical study report date” as the “end date” of foreign clinical trials.

3.2   Amend the Patent Examination Guidelines to make patent term extension consistent with long-term practice in Taiwan before 2018 and practice in the United States and Japan. In determining the correlation between patent claims and first market approval, the Patent Examination Guidelines (Chapter 11, Part 2, Section 4.3) provide that “the active ingredient recorded in the first market approval must be covered by the substance claims.” However, the Guidelines as amended in 2018 erroneously introduced an example (Example 5) in Section 4.3 referring to an ineligible PTE case in which the effective ingredient in a first market approval was a hydrate of a compound while the claim only cites a compound.

When the Patent Act was enacted in 1994, the addition of PTEs and relevant application regulations was explained by referring to foreign legislative examples, including the Japan Patent Act, and noting that they were added to “conform to actual needs.” Since Taiwan’s PTE regulations and guidelines were established in view of American and Japanese legislation, the principles determining a patent’s eligibility for extension should be similar.

PTE-related practices in different countries tend to vary slightly in technical details, such as the scope of extension and restorable time. In the United States and Japan, PTEs based on a first market approval of a compound hydrate are allowable for a patent with a compound claim. Before the 2018 amendments, practice in Taiwan was identical to that of the United States and Japan. However, according to Example 5, PTE results based on a first market approval under the same situation would result in a completely opposite outcome. This violates the PTE’s legislative intent to compensate for the lost time due to the inability of an invention patent (of a pharmaceutical product or its manufacturing process) to be used when it is obtaining market approval.

As Example 5 in Section 4.3 of the Patent Examination Guidelines contravenes the PTE’s legislative intent and contradicts the Guidelines’ requirement for there to be a “correlation between patent claims and the first market approval,” we suggest removing Example 5 from the Guidelines.

Suggestion 4: Establish independent provisions in the Patent Act to deal with indirect infringement.

The Patent Act currently addresses only direct patent infringement and lacks explicit provisions for indirect infringement, where a party only partially contributes to the claimed infringement. In cases involving indirect infringement, parties can only apply the joint-tort provision (induced and contributory tort) from Article 185 of the Civil Code, as the Intellectual Property Court (IP Court) often states that there is no provision concerning “indirect infringement liability” (liability for indirectly infringing upon the direct infringement acts of a third party) in Taiwan’s patent laws.

However, the effectiveness of the above joint-tort provision in addressing indirect infringement is debatable. Firstly, the objectives of the Patent Act (encouraging innovation and promoting industrial development) differ from those of the Civil Code and its related laws. Secondly, the IP Court’s practice generally mandates the presence of direct infringement to satisfy the All-Element Rule and adhere to the subjective and causation requirements stipulated in the Civil Code’s joint tort provision. This requirement poses a significant challenge for patent owners attempting to file claims against indirect infringers, who may only contribute partially to the infringement.

Moreover, for indirect infringement, the joint-tort provision of the Civil Code only enables patent owners to claim monetary damages. The right to demand removal or prevention of indirect infringement is not specified in the Civil Code, as Article 96 of the Patent Act does for direct infringement. Therefore, it is essential to incorporate specific provisions in the Patent Act to cover indirect infringement.

Today, countries such as the United States, the United Kingdom, Germany, Japan, and South Korea have followed this trend and fortified their patent protection by incorporating indirect infringement into their patent laws. Meanwhile, Taiwan lags behind other countries in this regard, and would benefit from strengthening its patent rights through the legislative process. In light of Taiwan’s continuing innovations, ongoing industrial transformation, and critical position in the global supply chain, the Committee believes that introducing specific provisions to tackle indirect infringement and strengthen IP protection would not only further protect domestic companies’ patent rights, but also further encourage foreign investors to invest in Taiwan.

The Committee recommends that the Taiwan Intellectual Property Office and other relevant authorities initiate dialogue and discussion regarding amending the Patent Act to include indirect infringement. The Committee suggests adding the following wording to the law: “A person who knowingly offers for sale or sells an item that constitutes the primary technical means for solving the problem of an invention patent to an infringer of that patent shall be deemed to have infringed upon the patent right.” The inclusion of this language, which has been adopted by most countries, would serve to enhance patent protection in Taiwan.