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16

JUN

2022

I. Bid to Join CPTPP: Legislative Yuan (Taiwan) Approves Draft Amendments to the Copyright Act, Trademark Act, and Patent Act

In order to ensure that Taiwan’s IPR laws comply with the CPTPP’s regulations and will hopefully facilitate future negotiations for Taiwan to join the CPTPP, the Legislative Yuan passed draft amendments to the Copyright Act, the Trademark Act, and to Article 60-1 of the Patent Act on April 15, 2022, which were promulgated by the President on May 4, 2022. The effective date is to be decided by the Executive Yuan.

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II. Scope of File History Estoppel for the Patent Case: Heraeus Precious Metals North America Conshohocken LLC v. Giga Solar Materials Corp. (Taiwan)

Introduction

The doctrine of file history estoppels: the patentee shall not claim the abandoned patent rights on the basis of the doctrine of equivalents if the patentee narrowed the scope of patent rights due to amendments, corrections, or the like, during patent prosecution and maintenance.

The Patent Infringement Judgment Points (2016 edition) indicated that if the patentee narrowed the patent scope by taking an action such as amendments, correction, or response, and foresaw such action resulting in the abandonment of a part of the patent right. Under such circumstances, permission for the patentee to claim the abandoned patent scope based on the doctrine of equivalent, which does not comply with the intention of the doctrine of equivalents. In other words, the doctrine of equivalents does not apply to the abandoned patent scope, but applies to the patent scope remaining in the patent. In particular, the patent scope abandoned by the patentee shall be determined by the purpose or grounds of the action such as amendments, correction, or response. If the purpose for narrowing the patent scope is related to the patentability of novelty and inventive steps to distinguish from the prior art, the abandoned patent scope is regarded as the patentee's intention to give up. Hereby, the file history estoppel of the application will be involved.

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JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

10-1 Fl., No. 23, Sec. 1, Chang-An E. Rd.,

Taipei 10441, Taiwan, R.O.C.

Tel: +886 2 2531-0876 Ext. 180

Fax: +886 2 2581-2761

E-Mail: jawhwa@jaw-hwa.com.tw

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