Taiwan Intellectual Property Office establishes ‘TAIWAN IP Team’ and devises six strategies during Covid-19
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Yi-An Lai (Ann Lai)
Chien Yeh & Associates, Taiwan
yianlai@chien-yeh.com.tw
As Covid-19 continues to cause devastation around the world, many countries are engaging in research and development (R&D), especially for test reagents, Therapeutic Drugs Treating Covid-19 and vaccines, in order to tackle intellectual property (IP) rights issues and address legal risk.
The Taiwan Intellectual Property Office (TIPO) follows this trend and provides the relevant industries with the information and services that the patent-related industry sector requires. Recently, TIPO has created a ‘TAIWAN IP Team’, in order to accelerate the creation of new technologies; encourage people to develop new projects; and inspire new energy against the coronavirus. Moreover, TIPO has been devised six new strategies: ‘Patent analysis to assist our TAIWAN Mask Production Team’; ‘Grand publication of global anti-coronavirus patents and technologies’; ‘TAIWAN patent information pertaining to potential medicines’; ‘Service lines for anti-coronavirus trademarks’; ‘Announcement of extension of certain patent and trademark-related timing deadlines under the coronavirus’; and ‘Consultancy services at home and e-submissions with one single click’. This paper will explain each of these projects.
Patent analysis to assist our TAIWAN Mask Production Team
Taiwan has been noted for its minimal response to the pandemic and has been acclaimed widely for its ability to pool resources from the private sector, to produce large quantities of sought-after surgical masks in a time of worldwide shortage. Currently, over 20 countries are interested in procuring Taiwan’s mask production machines and equipment.
The Ministry of Economic Affairs (MOEA)[1], Taiwan, Republic of China, collaborates with machine tool manufacturers to organise the ‘TAIWAN Mask Production Team’ for the purpose of raising the quantity of masks produced and generally enhancing productivity.
Additionally, TIPO also publishes the overall status of the global arrangement pertaining to mask production machines and related technologies, to help the national mask production team avoid infringing the patent rights of others. TIPO provides patent analysis services and certain assessments when the mask production team requires its assistance.
Publication of global anti-coronavirus patents and technologies
TIPO has set up the ‘Fighting Covid-19 area’ in the Global Patent Search System (GPSS). With one single click, the related technologies with regard to 14 anti-coronavirus industries (such as masks, protective clothing, test reagents, vaccines, etc) can be searched and found in the GPSS system. In addition, being a registered member of GPSS can set the search conditions for preferred technologies: the GPSS will automatically show the latest patented cases and the member in question can also use statistical analysis, chart analysis and other value-added services to allow the industry to quickly grasp key information pertaining to the development of global epidemic prevention technology.
TIPO updates current Taiwanese patent information regarding Covid-19-related clinical trial drugs for public reference[2]
TIPO has verified the patent database by referencing the United States clinical trial database, including the Covid-19-related clinical trials which are currently registered. Until the vaccine against Covid-19 is released, medical experts and specialists in Taiwan (and across the world) are struggling to find an effective antidote. As a result, drug repurposing has become the safest and most efficient method to tackle the virus in the short term.
Since March, TIPO has been continuously exposing purported remedies against Covid-19 in Taiwan as pre-existing drugs (including ‘Remdesivir’, ‘Hydroxychloroquine’, ‘Favipiravir’ and the antiparasitic drug ‘Ivermectin', among others). There is a total of about 52 medicines that are deemed popular and up-and-coming. TIPO actively searches for and discloses the status of Taiwan's medicine licences and patent information, which may be as follows:
- the core patents of the main active constituents, which are protected by patent rights in Taiwan;
- drugs which are registered under Taiwanese Patents, whose claims contain core patents of major active ingredients,[3]including small molecule drugs[4]and therapeutic proteins;[5]
- the core patents of active constituents have no patent protection in Taiwan – these only have other, non-core patent protection; or
- no patent protection in Taiwan, meaning drugs which are not registered by TIPO, including small molecule drugs[6]and therapeutic proteins.[7]
According to the above information, it is conducive for pharmaceutical manufacturers to note the patent situation and plan a market strategy that encompasses licensing, design and elimination of patent infringement risks. This will enable any future Covid-19 antidote to be launched smoothly and efficiently on the market, as soon as possible, to benefit the Taiwanese and the world.
Taiwan Patent Act Article 59 states that: 'The effects of an invention patent right shall not extend to the following circumstances: (2) necessary acts to exploit the invention for research or experimental purpose(s).'
Service lines pertaining to anti-coronavirus trademarks
Some goods and sanitary items have become popular and have seen recent extensive use, such as hypochlorous acid water, antibacterial dry-cleaning hand agents, mask decompression sheathes, medical protective clothing and other epidemic prevention products. This opens new business opportunities. The TIPO collects and organises a list of classifications of ‘epidemic prevention goods and services’ for applicants’ reference. The applicant files a trademark application electronically and adopts the list of acceptable goods and services from the TIPO. Then, the applicant can enjoy a reduction of the official fee of TWD 300 per class. At the same time, the consultation hotline service has been opened.[8]TIPO staff will guide service-users in conducting a mark search and providing an opinion as to a product's Registrability. This will help the industry to quickly apply trademarks and also reduce marketing risks.
Announcement about extension of deadlines
There has also been an announcement about the extension of certain patent and trademark-related timing deadlines under Covid-19, as well as about the overall handling of patent and trademark applications during this pandemic. Specifically, the announcement outlines how applicants affected by the epidemic can apply for an extension and stipulates that further extensions can be granted in certain circumstances.
If patent and trademark cases are delayed due to the coronavirus and if the statutory period for other procedures (such as the period for payment of certificate fees, payment of patent annual fees, request of substantial examination, application re-examination, etc) is also extended, people can submit supporting documents to apply to restore the original status. In general, the case will be determined with leniency, in order to ensure the rights and interests of the applicant. The statutory period or designated period shall be handled as follows:
Legal period
In accordance with Article 17 Paragraph 2 of the Patent Act[9] and Article 12 of the Enforcement Rules of the Patent Act,[10] or Article 8 paragraph 2 of the Trademark Act[11]and Article 9 of the Enforcement Rules of the Trademark Act,[12] an applicant who applies for restoration must explain how the Covid-19 situation has delayed the legal period and must attach the relevant certification documents to apply for the original status.
If the applicant appoints a Trademark/ Patent Attorney, which is affected by the Covid-19 epidemic and thus the applicant delays the statutory period, then the agent may present relevant evidence.
In general, TIPO would be lenient in light of the specific circumstances of the case.
Specified period
If the applicant delays the specified period due to the Covid-19 epidemic, the relevant actions can still be corrected before punishment by the TIPO, if the applicant believes that the original specified period requires an extension as a result of the impact of Covid-19.
When the applicant applies for an extension of the specified period due to the Covid-19 epidemic, the extension of the specified period will be based on the current review criteria and other practical regulations. The applicant is requested to show credible evidence for its failure to comply with the deadline.
When TIPO considers that it is necessary, it will extend the original specified period for another month. The appropriate period of more than one month may be extended, depending on the specific case.
Smart consultancy services at home and e-submission
People can utilise professional volunteer consulting services while staying at home, so that there is no need to worry about filing patent and trademark applications during the pandemic period. Those who use an online filing system may also enjoy a discount during this period.[13]
Notes
[2] TIPO releases patent information for Covid-19 clinical trial drugs.
[3] Lee and Li Attorneys at Law. Available at: www.lexology.com/library/detail?g=026f42f8-b0e8-47df-9e9f-48b98e374ac1. (Last accessed 26 May 2020.)
[4] Chemical compounds or antibody molecules.
[5] Remdesivir, ASC09F or ASC09/ritonavir, darunavir/cobicistat and danoprevir.
[6] Novaferon and anti-PD-1 antibody.
[7] Umifenovir, oseltamivir, ribavirin, chloroquine phosphate, hydroxychloroquine and thalidomide. Recombinant human interferon α-2b, pegylated interferon α-2b, recombinant human interferon β-1β, eculizumab, mepolizumab, thymosin and rhACE2.
[8] This service will be available until 31 May 2020 and will extend the service time flexibly based on the needs of the epidemic situation.
[9] Article 17 Delay and reinstatement. Unless otherwise provided in this Act, where a person filing a patent application or taking other proceedings in connection with patent-related matters has failed to comply within a statutory or specified time period, the application filed or the proceeding initiated shall be dismissed. However, if the delay of not acting within a specified time period has been remedied before the dismissal decision is served by the Specific Patent Agency, such application or proceeding shall still be accepted.
[10]Article 12. When requesting reinstatement under Article 17, Paragraph 2 of the Act, a request form shall be submitted to the Specific Patent Agency stating the reasons for the delay and the date of extinguishment of such delay and accompanied by the document(s) of proof.
[11]Article 8. Inadmissibility of application; restoration to status quo ante. Unless otherwise prescribed in this Act, an application or other proceedings of trademark shall be inadmissible if an applicant, holder or other interested person thereof has failed to comply within the statutory period, to conform to legal formality that cannot be amended, or to conform to legal formality which is not amended within the period specified in a notice. However, if the failure to conform to legal formality which is not amended within the specified period has been amended before the disposition is rendered, such application or proceeding shall still be admissible.
[12]Restoration to the status quo ante. While requesting for restoration to the status quo ante pursuant to Paragraph 2 of Article 8 of the Act, the applicant, holder or other interested person shall submit a written statement clarifying the cause of failure to comply within the statutory period and the date on which such cause vanishes; documents of proof shall be included.
[13]A reduction of the official fee of NT$600 for new patent applications and NT$ 300 for a new trademark application.