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Technical Examination Officers at Taiwan’s IP Court

Technical Examination Officers ( “TEO“) are officers of the court who assist judges at the Taiwan Intellectual Property Court (“IP Court“) in litigation involving complex technology.

There are currently 13 TEOs at the IP Court with expertise in fields such as electrical engineering, chemistry, and biotechnology. Most are patent examiners on secondment from the Taiwan Intellectual Property Office.

Taiwan’s Legislature authorized the appointment of TEOs when it established the IP Court in 2007. Intellectual Property Court Organization Act §15(1).  Taiwan’s TEOs are modeled on the judicial researchers at the Japan’s Intellectual Property High Court and the technical examiners at the Korean Patent Court.

Acting under instructions from a judge, a TEO “makes judgments about technology, collects technical information, and analyzes and gives opinions about technology.” Organization Act §15(3). In particular, a TEO can analyze and organize the issues in party briefs to clarify the issues in dispute and refer the Court to learned treatises in the field. Intellectual Property Case Adjudication Rules §13(1)(a).

A TEO may also “participate in the litigation.” Organization Act §15. This means that on instructions from a judge, a TEO can appear in court and question parties, their counsel, and witnesses or give opinions for the court’s reference on technical issues. Intellectual Property Case Adjudication Act §4;  Adjudication Rules §13(1)(c).

In more complex cases, a TEO may be ordered  by the IP Court to produce intermediate and final reports on technical issues. Adjudication Rules §16. While the parties do not have access to these reports, the IP Court will disclose opinions it has received on “specialized technical information” to the parties and give an opportunity to respond before using such opinions as the basis for its judgment. Adjudication Rules §16

As fact finders, the IP Court judges are not bound to adopt the views of the TEO and in complex cases, the IP Court will usually also appoint an neutral expert witness to evaluate the technology in dispute. Furthermore, the statements of TEOs may not be offered by the parties as evidence of facts in dispute. Adjudication Rules §18.

Between 2008 and 2012, TEOs were assigned to a total of 1,636 cases. 1,070 of those cases were civil matters, 550 were administrative and sixteen cases were criminal. TEOs provided assistance with mechanical technologies in 48% of these cases, IT in 26%, and chemistry in 8%.

Although the role of TEOs has been controversial in patent litigation and the subject of a number of Supreme Court cases, our experience has been that TEOs serve as able assistants to the judges on the IP Court.

WP named as Employer of Choice

Winkler Partners has been named by Asia Legal Business Magazine as an Employer of Choice for 2015. We were the only law firm in Taiwan to be given this award.

The survey was conducted by asking 3000 employees at law firms across Asia for their opinion of salaries, work life balance, career advancement opportunities and a variety of other criteria. We were rated highly for our work life balance, with counsel calling it ‘simply the healthiest, most enjoyable place I have ever worked.’

Winkler Partners was previously recognized as an Employer of Choice in 2010. You can view the entire article here.

WP listed among top law firms for our trademark practice

Winkler Partners has been recognized as an “eminent” trademark practice by the World Trademark Review. The WTR ranks firms and individuals in seventy major markets worldwide, and publishes their findings annually, in a report known as the WTR 1000.

In their 2015 publication, the WTR says that “the IP function at Winkler Partners is one of Taiwan’s most laudable” and that our “combination of domestic and international expertise appeals to many major companies – it represents nearly one-quarter of Interbrand’s 100 most valuable brands”. The WTR goes on to state that WP is known for our “star-studded client base” that includes major domestic tech properties as well as global eCommerce and Internet giants.

Quoting our clients, WTR notes that we provide “a high level of competence, good understanding of local laws, consistent results and prompt, attentive service”. In previous years, we have been recognized as “a favorite of companies with a transnational interest” as well as for our “highly knowledgeable and client-focused counsel”.

Head of our IP practice, Peter Dernbach, has also been named as a top trademark professional in the report. Described as “standout”, Peter is “a trusted advocate who speaks excellent Chinese and understands the system very well… he and his entire team are a real pleasure to work with”. Peter is ranked highly for enforcement and litigation, and listed as one of only five individuals in Taiwan for his prosecution and strategy work.

The WTR 1000 is the first definitive guide exclusively dedicated to identifying the world’s leading trademark legal services providers. Winkler Partners has been honored to be included since the publication launched in 2011. You can find the entire guide for 2015 here.

Taiwan’s Labor Ministry relaxes rules for foreign professionals working at startups

On 7 January 2015, the Ministry of Labor (MOL) amended rules for foreign professionals working in Taiwan. Among the latest amendments, foreign professionals that have a bachelor’s degree or higher are no longer required to have work experience to work at qualifying startups. Qualifying startups are those that meet one of the following criteria outlined as part of the National Development Council’s HeadStart Taiwan project:

  • Have received NT$2 million or more in venture capital,
  • Have registered on the Go Incubation Board for Startup and Acceleration Firms (GISA) with the GreTai Securities Market,
  • Have been granted an invention patent in Taiwan, or have had a patent assigned or licensed to exploit by a Taiwanese invention patent holder, the assignment or license of which is registered with the Taiwan Intellectual Property Office (TIPO),
  • Incubators already part of the international startup cluster in Taipei approved by the Executive Yuan or directly operated by or cooperating with the Ministry of Economic Affairs and which have been rated as Quality Incubators by the Ministry in the last three years or,
  • Have won awards in recognized entrepreneurial or design competitions.

HeadStart Taiwan’s main objectives are to create an environment that supports the growth of Taiwan’s startup ecosystem through deregulation, attracting capital, and cluster building. For more information, please refer to the NDC’s website here.

WP to attend gTLDs dispute resolution event in Hong Kong

Peter Dernbach, head of our IP team, will be attending the panelist meeting at the Asian Domain Name Dispute Resolution Centre and the Hong Kong International Arbitration Centre seminar on ‘Online Brand Protection: Tips on New gTLDs Dispute Resolution” on Monday, January 12 in Hong Kong. Details of the seminar can be found here.

Peter has served as a panelist in dozens of domain name disputes brought under ICANN’s UDRP system. If you’re attending this event, be sure to introduce yourself.

WP closed for New Year holidays

Winkler Partners will be closed on the 1st and 2nd of January, 2015 for the national New Year holiday. Please direct any urgent matters to info@winklerpartners.com. We will return to normal working hours on the 5th of January, 2015.

Please note that government offices in Taiwan will also be closed for the national holiday. Any specified governmental deadline falling during the national holiday will be automatically extended to the next working day, Monday, the 5th of January 2015.

Best wishes for the New Year from all of us at Winkler Partners.

WP ranked as top-tier insurance firm by The Legal 500

For a third consecutive year, The Legal 500 Asia Pacific has ranked Winkler Partners’ practice a top tier firm for insurance. Led by partner Chen Hui-ling, our insurance practice focuses on reinsurance, D&O insurance, and dispute resolution with specialized expertise in arbitration. The Legal 500 also states that D&O insurance is a particular strength, and noted that we have recently advised on a case of insider trading by directors of a listed company.

Led by partner Peter Dernbach, our IP practice also came highly recommended, as we work with some of the leading global brands across a wide variety of sectors. Partner Gary Kuo was recognized for his ‘excellent reputation’ and securing many favorable judgments. Partner Christine Chen was recommended for her IP litigation and enforcement work.

The Legal 500 has been ranking law firms worldwide for 27 years, with a special attention to practice area teams who are providing the most cutting edge and innovative advice to corporate counsel. You can read the latest Legal 500 Asia Pacific rankings here.

WP awarded major contract

Winkler Partners Translation has been awarded a major capital markets translation project by a group of Taiwan regulators and exchanges. In this project, Winkler Partners expands its role, ongoing since 2001, as the primary translator of the authoritative English versions of Taiwanese capital market laws and regulations, which can be found at http://eng.selaw.com.tw/.

Registering your .taipei domain and protecting your brand online

In August, Taipei City Government reached an agreement with ICANN to release the .taipei domain and make it available to businesses and individuals. Spearheaded by Taipei’s Department of Information Technology (DOIT), the .taipei project follows a trend set by other world cities such as New York, London and Berlin, which, in recent years, have launched their own city-level domains. According to the organizers, the new domains are a good way to market goods and services to the local community; attach a geographic location to brand identity; highlight a business’ location in relation to competitors; and provide a boost to search engine optimization (SEO).

From December 1, holders of global trademarks registered with the Trademark Clearinghouse (TMCH) will be given priority to register their new .taipei domains, following that in January 2015 Taipei-based companies and organizations will be able to register their .taipei addresses. General registrations won’t be permitted until March 31st.

Registrations will be processed in four waves:

Sunrise Period: December 1-31: Owners of trademarks registered with TMCH
Taipei Enterprise Sunrise Period
: January 21-February 19: Entities registered in Taipei City or New Taipei City only
Landrush Period
: February 24-March 26: First come, first served
Open Registration: March 31 onwards

*For detailed period policies please click the respective link

Domains registered in the Sunrise Period will cost a total of NT$4800 (approximately US$155) for three years. Taipei Enterprise fees will be NT$1920 for three years, while registrations made in the Open Registration Period will cost NT$800 for one year, according to information provided by Net Chinese (in Chinese), the domain registrar handling the .taipei project. Trademark holders wishing to register during the Sunrise Period can only register domains that exactly match the trademark listed with TMCH. During the Taipei Enterprise period, both full and partial matches are permitted.

The priority given to trademark holders allows for the protection of these marks online, and prevents domain squatting, a practice that can seriously damage a brand’s online identity and reputation, and can cause confusion amongst consumers. WP’s Daniel Chen, who has worked on many domain dispute cases for our international clients says, “We advise our clients, and indeed all trademark holders, to register their respective domains early to avoid the often lengthy and costly process of obtaining a suspension and/or transfer of domains registered by squatters”.

Additionally, Partner Peter Dernbach is active in the ICANN community as a member of the IP Constituency, currently serving as a member of the PDP Working Group on Translation/Transliteration of Contact Information. Peter also serves as a Panelist for WIPO’s Arbitration and Mediation Center, and has helped resolve numerous domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Businesses interested in registering a .taipei address should visit the .taipei project website for more information, or contact Net Chinese.

Food Safety: A Legal Perspective

WP partners Peter Dernbach, Gary Kuo and paralegal Michael Fahey recently contributed an article to the American Chamber of Commerce in Taipei (AmCham)’s monthly TOPICS magazine. The article takes a look at the recent set of food scandals that have shaken the public’s faith in Taiwan’s food industry, examining it from a legal perspective.

The article summarizes previous food scandals that have occurred in Taiwan, dating back to the bran oil tragedy in 1979, which claimed the lives of over fifty people and caused significant physical harm to many others.

The article goes on to analyze the key litigation following the 2011 plasticizer scandal and the 2013 olive oil scandal. Peter and Gary explain the successful criminal prosecutions in both cases, the failure of a class action in the olive oil case, and the constitutional issues that led the Ministry of Health and Welfare to roll back massive fines imposed by local governments.

The article concludes that while Taiwan has made significant and admirable strides in its legal system since the 1979 bran oil tragedy, it will need to do much more to ensure that the country’s vibrant culinary culture and consumer health are adequately protected.

The entire article is available on AmCham’s website.

 

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