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WP closed for a public holiday

Winkler Partners will be closed on Monday, 1 March for a public holiday. Please direct any urgent matters to info@winklerpartners.com which will be monitored regularly. We will return to normal working hours on Tuesday, 2 March.

Please note that government offices in Taiwan will also be closed for the holiday. Any specified governmental deadline that falls on the above date will be automatically extended to the next working day, Tuesday, 2 March 2021.

WP ranked as top IP firm

Winkler Partners has been ranked as a top tier firm for intellectual property (enforcement and litigation) by the World Trademark Review. Only three law firms in Taiwan appear in the top tier for 2021.

In their annual WTR1000 report, The World Trademark Review says that our firm is a “leading player in litigation and the go-to firm for multinational and top-dollar brands” and has been “growing its sports entertainment and media work, as well as over the top-related trademark matters”. They also note that we “are responsive, detail-oriented and flexible when clients have budgetary concerns”.

Individually, the World Trademark Review also recommends partners Peter Dernbach as “a standout choice when it comes to IP strategy, protection and enforcement”; Christine Chen as “a leading figure in anti-counterfeiting and IP enforcement”; and Gary Kuo, who ”regularly deep dives into myriad civil and criminal litigation cases”.

We were also ranked in the second tier for prosecution and strategy.

You can read the full WTR1000 rankings for Taiwan here.

Exploring statistics at the Taiwan Intellectual Property Court: part IV administrative litigation

Having highlighted some interesting statistics regarding civil judgements rendered by the Intellectual Property Court (“IP Court”) in the previous section of this report, we turn now to statistics regarding judgements in administrative litigation cases.

Note that in terms of statistical basis, win rates of all administrative litigation cases, actions for revocation and actions seeking to impose an obligation are based on figures published by the Judicial Yuan, which include all cases heard by the IP Court. However, the proportion and win rates of patent and trademark litigation cases are calculated using the dataset provided by the Judicial Yuan at “data.gov.tw”, which includes only those judgements that are accessible by the public.

Win rates for plaintiffs in all administrative litigation cases

Win rates for plaintiffs in all administrative litigation before the IP Court are calculated as follows: total wins (each complete win counted as 1 case; each partial win is counted as 0.5 case) divided by all cases in which either the plaintiff or the defendants prevailed.

One of the characteristics of administrative litigation in Taiwan is the low win rate for plaintiffs. In most cases, the defendants (i.e. the authorities) prevail. This is also the case for IP related cases. We can see from the following chart that the win rates for plaintiffs in administrative litigation before the IP Court were lower than 20% in all but one year since 2008. However, since 2016 the win rate has trended upward somewhat to reach 23.5% in 2019 – the highest rate on record. It appears that in recent years where a plaintiff was dissatisfied with the decision made by the Taiwan Intellectual Property Office (the “TIPO”) and filed an administrative action, the plaintiff was more likely to obtain a favorable judgement.

Win rates for plaintiffs in all administrative litigation cases closed from 2008 to 2019

Source:Judicial Yuan

Win rates for plaintiffs in actions for revocation and actions seeking to impose an obligation

There are two types of administrative litigation in Taiwan: actions for revocation and actions seeking to impose an obligation. The former refers to simply revoking an unfavorable decision. In trademark matters for example, where the TIPO renders a decision that “the opposition is justified and the disputed trademark shall be cancelled”, the trademark owner may file an administrative action requiring the court to revoke their decision so that the trademark registration remains active as the cancellation becomes invalid. This kind of administrative action is called an action for revocation.

An action seeking to impose an obligation requires the court to order the authority to render a favorable decision. This kind of action also requires the court to revoke the previously rendered decision, as it is necessary to revoke the decision rejecting the plaintiff’s request before rendering another favorable decision in the same matter. In a trademark matter for example, if a trademark application is rejected by the TIPO, the applicant may file an administrative action requesting the court to order the TIPO to approve the registration. If the court believes the plaintiff’s request is reasonable, the court will first revoke the rejection made by the TIPO, then order the TIPO to approve the plaintiff’s trademark application.

As shown in the chart below, the win rates in actions seeking to impose an obligation have always been higher than actions for revocation. Furthermore, both kinds have had opposite trends since 2016, the win rates in actions for revocation declined from about 15% in 2016 to the lowest point of 9.9% in 2019, and the win rates in actions seeking to impose an obligation increased from about 20% in 2016 to the highest point of 34.9% in 2019. As such, we can see an obvious gap between the win rates for these two kinds of action.

Win rates for plaintiffs in actions for revocation and actions seeking to impose an obligation closed from 2008 to 2019

Source:Judicial Yuan

Win rates for plaintiffs in patent and trademark administrative litigation cases

The following section considers the proportion and win rates of different categories of patent and trademark administrative litigation cases. Note that the TIPO has authority to review and amend fee rates set by copyright collective management organizations in accordance with the Copyright Act and Copyright Collective Management Organization Act. However, as there are very few copyright administrative litigation cases, we do not consider them in this analysis.

Win rates for plaintiffs and proportion of various types of patent cases

Looking at patent cases first, we find an interesting trend of win rates for plaintiffs in all patent administrative litigation cases. In 2010, the win rate of 29.6% was the highest on record, after 2010, the win rates fell steadily to the lowest point of 11.1% in 2014 before recovering in subsequent years. The win rates for plaintiffs has been approximately 24% for four consecutive years since 2016.

Win rates for plaintiffs in patent administrative litigation cases closed from 2008 to 2019

Source:data.gov.tw

Patent administrative litigation cases are divided into four types: (i) invention patent; (ii) utility model patent; (iii) design patent; and (iv) others. In observing the proportion of the four types of administration litigation cases, we note that the proportion of utility model patents has been decreasing, from nearly 60% in the early years of the relevant period to only 30% to 40% in more recent years. On the other hand, the proportion of invention patents used to account for only about 35% in early years, but there is an increasing trend in more recent years. The proportion of cases regarding invention patents has been more than 50% from 2016 through 2019, and even exceeded 70% in 2017. As for design patents, it has always been the minority among patent cases. The proportion has never reached 10%, even the highest point in 2014 was only 9.8%.

Patent administrative litigation cases closed from 2008 to 2019


Source:data.gov.tw

We can observe from the win rates for plaintiffs in the different types of patent administrative litigation cases that, as the number of design patent cases is small, the win rates in design patent cases varied very significantly from 0% to 100%. As for the win rates for plaintiffs in invention patent cases and utility model cases, the win rates show similar trends, with rates reaching a peak in 2010 or 2011, then falling to the lowest point in 2014, and bouncing back thereafter. The win rate for plaintiffs in the above two types of patent cases was approximately 25% in 2018 and 2019.

Win rates for plaintiffs in patent administrative litigation cases closed from 2008 to 2019

Source:data.gov.tw

Win rates for plaintiffs and proportion of different kinds of trademark cases

As for trademark administrative litigation cases, the win rates for plaintiffs fluctuated between 10% and 19% in the period before 2018. There has been a noteworthy consecutive increase in the win rates in the most recent four years, from 11.4% in 2016 to a peak of 25% in 2019.

Win rates for plaintiffs in trademark administrative litigation cases closed from 2008 to 2019

Source:data.gov.tw

Turning to administrative litigation regarding (i) trademark registration; (ii) trademark opposition; (iii) trademark invalidation; (iv) trademark cancellation; and (v) other cases, we note an interesting trend in terms of their proportion. The proportion of trademark registration cases decreased from almost half of all cases in the early years to only 20% to 25% after 2014. In terms of trademark opposition cases, the proportion remained relatively consistent at between 30% an 40%, while the proportion of trademark registration cases decreased, trademark opposition cases have became the dominant type of trademark litigation case after 2014.

Trademark invalidation cases accounted for around 30% of all trademark administration litigation cases in 2010 and 2011, but the proportion declined afterwards. Since 2015, the proportion of trademark invalidation cases has never exceeded 20%. Lastly, the proportion of trademark cancellation cases show an increasing trend. In 2008, trademark cancellation cases accounted for only 3.5%, but in 2019, the proportion was 20.6%, which was more than five times the proportion in 2008.

Proportion of trademark administrative litigation cases closed from 2008 to 2019


Source:data.gov.tw

The win rates for plaintiffs in trademark registration cases have shown a steady increase. In 2008, the win rate was only 10%, but by 2019, it had increased to 23.5%. The win rates for plaintiffs in trademark opposition cases between 2012 and 2015 remained at around 20%, but from 2016 to 2018, the win rates decreased to nearly 10%. Then in 2019, the win rate suddenly soared to 34.5%, which is the highest on record for the relevant period. There is no obvious trend regarding win rates for plaintiffs in trademark invalidation and trademark cancellation cases.

In 2019, the win rates for plaintiffs in different types of trademark administration litigation cases showed the following order, from the highest to the lowest: trademark opposition, trademark registration, trademark cancellation, then trademark invalidation.

Win rates for plaintiffs in trademark administrative litigation cases closed from 2008 to 2019


Source:data.gov.tw

Conclusion

In the four parts of this report, we have examined various statistics regarding Taiwan’s IP Court. In part one, we looked at statistics including the number of cases closed/lodged and number of days to close a case. Then in part two, we looked at broader statistics of the numbers and proportion of different kinds of litigation cases. For parts three and four, we further observed detailed statistics concerning civil and administrative litigation cases, including median value of claims raised and win rates.

The statistics examined in this report offer insights into the operation of the IP Court, and hopefully serve as a helpful reference for legal practitioners and researchers. However, further research is needed to understand the reasons behind the trends identified and whether these trends will continue in the future.

In addition, as per the Commercial Case Adjudication Act and the amendment of the Intellectual Property and Commercial Court Organization Act, from 1 July 2021, the IP Court will be renamed “Intellectual Property and Commercial Court”, and the IP Court will begin accepting commercial cases unrelated to intellectual property. It is worth following what changes in statistics and trends occur after the reorganization of the court.

For more information on IP matters in Taiwan, please contact Gary Kuo at gkuo@winklerpartners.com.

*Sources: (1) Judicial Yuan (2) IP Court (3) data.gov.tw.

*Note: Some of the figures provided in this report are calculated using raw data and may differ from those figures officially reported.

WP featured in article on family-friendly work environments

Winkler Partners’ child friendly policies were recently featured in an article by Social Enterprise Insights that looked at how businesses in Taiwan can do more to support families. This is an English translation of the original Chinese-language article.

To work or to parent—does it have to be either/or? Family-friendly work environments support healthy child rearing

Author: Yu-Ching Su

When Patty Chen joined the law firm Winkler Partners, a certified B Corporation, as a secretary, she wasn’t yet married, and was focused on forging her career. Today, nearly 20 years later, she is the mother of two children, aged 7 and 4. But she has never had to step away from pursuing her career ideals.

During her work life, she has never fretted that others might look askance at her taking maternity or parental leave, nor feared for her job security after taking leave. On the contrary, her employer Winkler Partners makes special efforts to give its employees an environment conducive to child rearing, surpassing the requirements of Taiwan’s Labor Standards Act. It invites employees to bring their children to work, so they can keep their kids close to them without sacrificing their professional aspirations.

Taiwan law entitles women to 8 weeks of maternity leave and men, 5 days of paternity leave. Both parents may apply for unpaid parental leave during the period before their child reaches the age of three. From Winkler Partners’ perspective, the law sets only a bare minimum standard. More than a decade ago, to improve on this standard, the firm began collecting suggestions from employees, holding firm-wide discussions, and drafting and revising proposals. It ultimately decided to extend maternity leave to 12 weeks for female employees and paternity leave to 30 days for male employees.

“This process began with our employees themselves voicing their needs, our listening to their needs, and after mutual discussion and revision, putting new systems in place to satisfy each proposal to the greatest extent possible,” explains Firm Partner Peter Dernbach, who takes pleasure in helping each employee balance the varying demands of work and family encountered at different stages of life.

Outlooks like this are not found at every workplace in Taiwan, however.

Taiwan’s Act of Gender Equality in Employment requires employers to provide employees with benefits including maternity and paternity leave, flexibility in working hours, and family care leave. However, a 2020 survey by the Womany Media Group found that less than 30% of respondents felt supported by their workplace in this regard. Many parents of both sexes encounter negative pressures from the workplace when it comes to applying for leave, which can deprive them of the opportunity to enjoy this basic right.

The Ministry of Labor’s 2018 Survey on Employment Equality at the Workplace likewise shows that female employees have suffered unequal treatment in the workplace related to their pregnancy or giving birth. Most prevalently, this takes the form of obstacles to applying for leave. Because prevailing attitudes in society and the workplace are often less than friendly to the needs of employees to balance work and parenting, the matter of applying for leave is a common cause of emotional stress for employees.

Improving this state of affairs will depend on business and government becoming more attuned to the needs of the public and taking steps to create childcare-friendly workplace environments, so that everyone can enjoy the right to work-life balance.

We’ve got your back in child rearing! This Taiwan business firmly believes in offering benefits surpassing legal requirements

Businesses taking the right actions is key to creating a family-friendly workplace environment. For example, Winkler Partners, a law firm with some 60 employees, not only provides more maternity and paternity leave than is required by law, it also has voluntarily created a childcare space at its office. (Article 23 of Taiwan’s Act of Gender Equality in Employment requires employers having 100 employees or more to provide childcare facilities and measures.)

Winkler Partners has set up a modest-sized childcare area, and its employees are welcome to invite their parents or a nanny to come to the office and help take care of their kids. For employees’ children who are already in kindergarten or elementary school, Winkler Partners, in cooperation with the Department of Early Childhood and Family Education of National Taipei University of Education, has arranged for students of the department to come to its workplace and engage the kids in after-school play and learning activities.

Patty Chen shares that being able to bring her kids to the office has spared her a lot of inconvenience and slog: “Because the kids usually travel with me to and from work, we can keep a shared daily routine, and I’m not burdened with having to separately coordinate the kids’ schedules after leaving the office,” Patty says. “Also, having the nanny and kids at the office means I can look in on them whenever I want, which puts my mind at ease.”

Winkler Partners has been implementing its unique childcare system for 16 years now. Peter Dernbach observes, “Since we began letting employees bring their children to work, our employee turnover has decreased, and our colleagues feel closer to each other.

But does having kids present in the office environment cause distraction for the employees as a whole? The key lies in the design of the work areas and leisure and childcare areas. At Winkler Partners, the leisure and childcare spaces are in a corner of the office at a slight distance from the main work areas. The sounds of children laughing and playing may occasionally carry into the work areas, but not to a degree that interferes with employees’ ability to concentrate on their jobs.

What are other countries doing? Some possible directions for public policy and social innovation

From an international perspective, Northern European countries, which rank relatively high in birthrate worldwide, use policies including moderately shortened or flexible working hours and lengthened maternity, paternity, and parental care leave to create a balance between family life and work.

Standards adopted by the International Labor Organization call for countries to legislate a minimum of 14 weeks (approximately 3 months) of maternity leave for female employees. According to a study by the US-based Maternal and Child Health Journal, maternity leave makes a crucial contribution to new mothers’ physical health and ability to cope with stress.

In Denmark, which is recognized for having a high level of public well-being and happiness, women are entitled to 18 weeks (approximately 5 months) of paid pregnancy and maternity leave during the period before and after giving birth. Their spouse is entitled to 2 weeks of leave after the birth. There then follows an additional 32 weeks (approximately 8 months) of parental leave that the two spouses can freely share between them. This system promotes the sharing of responsibilities within the family, and lets both parents have ample time to spend on childcare. Denmark furthermore has the lowest average working hours in the world, with workers working an average of around just 7 hours a day. This further helps both parents to balance their time spent on work and child rearing.

Sweden, which is well reputed for gender equality and child-friendliness, provides each working parent with 480 days (around 16 months) of flexible maternity, paternity, and parental leave that don’t expire until 8 years from the child’s birth (or adoption) and can be broken up and taken in periods of months, weeks, days, or hours, according to the specific needs of each family. Sweden also offers another special childcare benefit: parents can claim a payment of up to 80 percent of their usual wage if they need to stay home from work when their child is unwell.

In 2020, the Finnish Government announced that it would extend paid parental leave for both parents from 2-4 months to 7 months. Finland is also well known for promoting flexible working hours and remote work mechanisms, which help working parents tailor their work times and places to best meet their needs and balance family life and work.

Countries around the world are actively introducing legislation and promoting cooperation between businesses and government to improve workplace environments. In Japan, some private businesses have launched programs to help mothers tend to both family and work. Mama Square, a Japanese company launched in 2014, operates as a customer service center that provides a staffed daycare center for its employees. This setup benefits the employees, whose work time is freed up by the on-site nursery workers. It also solves the company’s problems of high turnover of service staff and difficulty of recruitment.

“Declining birthrate is a shared issue facing government, families, businesses, and society. Each of these can address it in different ways. What businesses can do is, when employees face the life challenges that come with having children, we can provide a better work environment, so that our employees can work with greater peace of mind. In turn, they can perform better in their work, and provide better service. This is definitely a winning situation all around,” says Peter Dernbach with conviction.

This article was planned by Social Enterprise Insights and YongLin Foundation and independently produced by Social Enterprise Insights. The translation was performed by Winkler Partners Head of Translation, Paul Cox. Social Enterprise Insights has granted us permission to republish this article. The original Chinese-language article can be found here.

此專題由社企流與永齡基金會共同企劃、社企流獨立製作,由本所翻譯部主任柯保羅翻譯。本文獲社企流授權轉載,原文標題:工作、育兒只能二選一?促進友善職場環境,讓公司成為員工生育的後盾。想看原文請點

2021 Summer internship

Winkler Partners is looking for a legal intern for summer 2021. Current 1Ls and 2Ls are both welcome.

The basic qualifications include good analytic, research, and writing skills. The successful candidate will probably be a native speaker of English or someone primarily educated in English who is currently a law student.

The successful candidate will also likely be able to speak Mandarin and must be able to read traditional Chinese with reasonable proficiency. We will consider candidates who speak other Chinese languages such as Cantonese if the candidate can read traditional Chinese.

Duties would include light case work, writing updates on legal topics, and curating content on the firm’s social media sites for 30-40 hours per week. The internship is modestly paid.

We regret that Taiwan’s laws currently preclude us from obtaining work authorization for candidates with Chinese citizenship (including Hong Kong and Macau) unless the candidate is a dual national. Offers to successful candidates will be conditioned on our ability to receive work authorization.

As Taiwan currently restricts entry into the country due to the pandemic, we are only able to extend offers to candidates who are: (i) Taiwan nationals or permanent residents; or (ii) foreign nationals legally residing in Taiwan at the time of application.

Please send a resume and a cover letter explaining your interest in an internship in Taiwan to personnel@winklerpartners.com by 5 March 2021.

WP welcomes new associates

We recently welcomed new members to the Winkler Partners team.

Megan Chiu joins Winkler Partners as a Compliance Specialist, assisting clients establish Taiwan entities, handling company registration and compliance issues, and assisting foreign professionals apply for work authorization and residency. Megan previously worked at one of the Big Four accounting firms.

Bryan Tan previously worked at a well-known corporate law firm in Hong Kong, where he is a licensed solicitor. Bryan’s practice covers capital markets, mergers and acquisitions, private equity and venture capital investments, corporate restructurings, and other general corporate transactions. He is admitted in Hong Kong.

WP achieves carbon neutrality

Winkler Partners is today announcing that we have achieved carbon neutrality for 2020 through reducing our emissions, purchasing green energy credits, and offsetting what we can’t reduce.

Running a business has a negative impact on the natural environment and from the beginning we have looked for ways to mitigate our impact. We have installed energy efficient lighting and appliances, greened the office and built a roof garden, captured rainwater, and installed solar panels that provide around 20% of our energy needs.

But we realized that this was not enough. As more people and businesses become aware of the severity of the global climate crisis, we committed to reaching carbon neutral ahead of both the Paris Agreement (2050) and a joint commitment made by over 800 B Corporations (2030) made at the end of 2019.

In 2020 we purchased enough T-RECs (Taiwan Renewable Energy Certificates) to cover the electricity we used that was not produced by our own solar panels. This amounts to 54,000 units of electricity, or approximately 27 tons of CO2e. As in years gone by, we offset international travel, accounting for approximately 50% of the firm’s total emissions, by using fellow B Corp Climate Care‘s carbon offsetting tools. Though international travel was put on hold in 2020 due to the pandemic, we will continue to use offsetting to mitigate our travel emissions once international travel resumes. For the remaining emissions, approximately 12 tons of CO2e, we chose a Gold Standard project based in Changhua, Taiwan, which focuses on wind energy generation and reforestation of 53.8 hectares.

In addition to the above, at the end of 2020 we entered into a power purchase agreement (PPA) with a green energy supplier, in our case, Foxwell Power. Their Tainan rooftop solar installations began providing us with electricity in November and their onshore wind in Changhua County will begin generating electricity in early 2021. We expect this agreement to generate around 90% of our energy needs, with any shortfall met by purchasing T-RECs.

We hope that by sharing our experience, we can encourage businesses large and small to act and reduce their own environmental impact. If you would like to learn more about our energy reduction and carbon neutral initiatives, please contact our Green Officer City Shen at cshen@winklerpartners.com.

A new positive patent examination program for startups

Lack of funds and tangible assets is a common problem for startups, and one which often proves fatal. To address this issue, Taiwan began promoting intangible asset financing starting on 1 January 2021. As part of this program, the Taiwan Intellectual Property Office (TIPO) has announced a new patent examination program, the Positive Examination for Startup Application Program (“Startup Program”), which may prove to be a significant development for Taiwan’s startup ecosystem.

Key Features

The proposed Startup Program has two main features which distinguish it from existing patent examination programs.

First, applicants will now have a right to prioritized examination. Under the current patent examination program, it usually takes 12 to 18 months to complete the examination process for an invention patent application. Under the new system, TIPO expects that applications filed by startups will be substantively examined within one month. Applicants can therefore expect to receive a result from the examiner a month after filing a request under the Startup Program.

Second, the new program includes a “Positive Interview” section, which comes into play if the patent application is rejected. According to TIPO, the Positive Interview provides an opportunity for applicants to have a face-to-face interview with patent examiners, which will allow applicants and their patent attorneys to gain a clearer understanding of any flaws or shortcomings in their applications. More importantly, patent examiners will provide concrete suggestions for the application during the interview. This minimizes the possibility of the application being rejected, thereby speeding up the process and indirectly lowering the cost for applicants. It should be noted that the Positive Interview is only intended for the purpose of assisting startups in the patent application process. While the examiner’s advice will be useful as guidance for the applicants, there is no requirement that the applicant follow the advice provided, and the applicant may instead amend the application as they wish.

Using the two key features mentioned above, the Startups Program will shorten the time required for a patent application to only 4 months. By contrast, applicants filing an application under the current system usually spend 18 months waiting for the patent to be granted, and if there is any rejection during the examination process, it may take up to three years to complete the application process. The expedited process under the Startups Program can strengthen startups’ financial status by allowing them to quickly accumulate IP assets which can be used to obtain loans or investment.

Who can apply and how?

While the Startup Program is aimed at providing support for startups, there is no specific  nationality requirement, and the program is not limited to local companies. “Startup” is defined here as any company that has been established for less than 5 years, and for a foreign company, its set-up date will be based on the national law of the company’s jurisdiction.

After filing patent applications and requests for substantive examination, applicants will generally receive a notification from TIPO within 30 days. Those who intend to apply through the Startup Program should submit an electronic application specifically for the program, after the notification but before receiving the first examination result.

Conclusion

There will be a trial run for this Startup Program in January 2021, under which TIPO will review 30 applications according to the new system. The program is widely anticipated, and is expected to make Taiwan a competitive choice for startups seeking to file their first patent applications.

For more information regarding patents in Taiwan please contact Peter Dernbach at pdernbach@winklerpartners.com and Betty Chen at betty@winklerpartners.com.

WP welcomes new associates

Winkler Partners recently welcomed several new members to our legal team.

Yi-Kai Chen advises domestic and international clients with enforcement and conflict resolution matters, often those involving intellectual property. He also advises clients with general legal matters in connection with their businesses in Taiwan. Yi-Kai is admitted in Taiwan.

Karen Liu joins the firm as an IP Associate, having over a decade of experience helping major domestic and foreign companies safeguard their trademark and patent rights in Taiwan and jurisdictions around the world. Karen is also certified by the Taiwan Intellectual Property Office and the Taiwan Intellectual Property Training Academy in Trademark Maintenance and Application, Trademark Application Management, Patent Technology Engineering, Patent Process Management, and Patent Search Analysis and Value-added Application.

Chi-Hsien Nieh joins our corporate and intellectual property teams, assisting clients with investment, merger and IP transaction inquiries. Chi-Hsien previously worked as a pro bono intern at Fordham University’s Samuelson-Glushko Intellectual Property and Information Law Clinic, receiving a public service award in recognition of his work.

Ming Teng‘s practice focuses on employment law and employer-employee relations, mergers and acquisitions, company formations, restructurings and dissolutions. He also advises clients on data protection and copyright issues as well as general contract matters. He is admitted in Taiwan.

Exploring statistics at the Taiwan Intellectual Property Court: part III civil litigation

In this part of our report (previous parts one and two are here), we look at civil judgments rendered by the Intellectual Property Court (“IP Court”) and analyze statistics regarding the value of claims raised, the percentage of such claims awarded in the first instance, the win rate in the first instance, the reversal rate in the second instance, and the settlement rate for patent, copyright, and trademark litigation cases from 2008 through 2019.

Note that in terms of the statistical basis, value of claims raised, and the percentage of such claims granted by the IP Court in the first instance, are calculated in accordance with the dataset provided by the Judicial Yuan at data.gov.tw, which includes only those judgments that are publicly available. Statistics regarding win, reversal, and settlement rates are based on figures published by the Judicial Yuan, which include all cases heard by the IP Court.

Value of Claims

The following charts plot the value of claims raised in copyright, patent and trademark civil litigation from 2008 through 2019, excluding those cases that were closed on procedural grounds.

Median value of claims raised in copyright cases

The median amounts varied significantly in copyright civil litigation during the years from 2008 to 2014. The lowest median amount was in 2011; in which, half of all cases had a claim amount of less than NTD 0.5 million (approx. US$18,000). The median rose to almost NTD 2 million in 2014. From 2015, the trend steadied, with half of all cases in each year through to 2018 having a value of claim less than NTD 1 million. However, the median went down to NTD 0.81 million in 2019.

Median value of claims raised in copyright litigation cases closed from 2008 to 2019

Source:data.gov.tw

Median value of claims raised in patent cases

Turning now to claims raised in patent litigation before the IP Court, the data shows a steady increase in the value of claims since 2008. In 2009, half of the  claims were under NTD 1.65 million, while this figure doubled to NTD 3.3 million by 2019. The peak was in 2016 with the median value of claims at NTD 3.9 million. The median has been near NTD 3.3 million in the most recent three years.

It is noted that the median value of claims in patent litigation is higher than that in copyright litigation. In recent years, that ratio is about 3:1.

Median value of claims raised in patent litigation cases closed from 2008 to 2019

Source: data.gov.tw

Median value of claims raised in trademark cases

The trend for claims in trademark litigation cases is similar that in patent cases. The median value of claims raised in trademark cases has grown steadily from NTD 1.8 million in 2009 to NTD 3.12 million in 2019. With the exception of 2016, the median value of claims in the most recent five years was above NTD 3 million.

Median value of claims raised in trademark litigation cases closed from 2008 to 2019

Source: data.gov.tw

In summary, in observing the three main categories of litigation cases, it is clear that the median value of claims in each category has followed a consistent trajectory in recent years. The value of claims in copyright litigation cases is the lowest and has decreased, whereas claims raised in trademark and patent litigation cases are significantly higher and are trending upward.

Percentage of claims granted by the IP Court in the first instance

Based on copyright litigation cases in which plaintiffs prevailed in a claim for monetary compensation, the IP Court has, on average, awarded approximately 25% of the value of claims raised by plaintiffs in the first instance.

The data for the three categories of litigation shows that the percentage of claims awarded by the IP Court have been lowest in relation to copyright cases. The awards in copyright litigation for the relevant years never exceeded 50% of the value of claims raised by the plaintiffs. In 2012, plaintiffs on average were awarded only 28% to 35% of the value of claims.

The percentage of claims awarded were highest in patent cases. Except for the lowest point of 23.9% in 2014, the average award exceeded 37% of the value of claims. The percentage reached the highest point in 2019 at 55.4%.

The trend in terms of percentage of claims awarded in trademark litigation is similar to that for patent cases, though the percentage is slightly lower. The data shows a dramatic rise in the percentage of claims awarded from 2018 to 2019, and the percentage has increased from the lowest point of 23.3% to the highest point in the ten most recent years of 54.7%.

Percentages of claims awarded by the IP Court in the first instance in copyright, patent and trademark litigation cases closed from 2009 to 2019

Source: data.gov.tw

Win rates for plaintiffs in the first instance

Win rates for plaintiffs overall in all civil litigation in the first instance before the IP Court are calculated as follows: total wins (each complete win counted as 1 case; each partial counted as 0.5 case) divided by all cases in which either the plaintiff or the defendants prevailed.

As shown in the chart below, the plaintiff win rate in all civil litigation cases in the first instance remained fairly stable from 2008 through 2019, ranging between approximately 18% and 24%, with a high of only 23.8% in 2015. Furthermore, the win rates have declined 2017 through 2019, reaching a low of 18.3% in 2019.

Win rates for plaintiffs in the first instance in all civil litigation cases closed from 2008 to 2019

Source: Judicial Yuan

Looking at copyright, patent and trademark cases separately, we see that the win rates for plaintiffs in patent cases have been the lowest among the three categories, with an average of only about 10% every year. After 2017, the patent case win rates fell further, dropping to the lowest point of 6.4% in 2019.

As for copyright and trademark litigation cases, the win rates fluctuated between 25% and 35% in most years of the relevant period, with no obvious gap between those two categories. However, the win rates in copyright cases have declined almost 10% since 2017, declining from 32.8% in 2017 to 22.2% in 2019. The win rates for trademark cases, however, have remained stable at about 33%. We can infer from the data that, from 2017 through 2019, the win rates for plaintiffs in patent litigation have been the lowest, with the win rates in trademark litigation cases being the highest, and copyright litigation win rates for plaintiffs in between the two.

Win rates for plaintiffs in the first instance in copyright, patent and trademark litigation cases closed from 2008 to 2019


Source:Judicial Yuan

Reversal rates for appellants in the second instance

The IP Court reversal rate is calculated as follows: all first instance decisions revoked (complete revocation is counted as 1 case; partial revocation is counted as 0.5 case) divided by the total number of appeal cases revoked or dismissed.

Overall, the reversal rates have fluctuated between 17% and 22% from 2009 to 2019. However, the rate increased to a peak of 25.6% in 2019, which translates to the IP Court revoking one in every four appealed cases that year.

Reversal rates for appellants in the second instance in all civil litigation cases closed from 2008 to 2019

Source:Judicial Yuan

Observing the reversal rates for copyright, patent and trademark cases separately, no clear trend is apparent. However, from 2016 through 2019, the trend appears to indicate that reversal rates in patent cases are lowest, followed by copyright cases, then trademark cases with the highest reversal rates. This trend is similar to what has been seen for plaintiff win rates above. In 2019, trademark litigation cases had a reversal rate of 39.1% in the second instance, while the rate for copyright and trademark litigation cases were 22.6% and 19.5%, respectively.

Reversal rates for appellants in the second instance in copyright, patent and trademark cases closed from 2008 to 2019

Source:Judicial Yuan

Settlement rate

Lastly, we turn to settlement rates at the IP Court. The rate of settlement for all civil litigation cases has been dropping since 2008, from more than 30% of cases being settled in 2008, to the lowest point of 7.46% in 2012. After 2013, the settlement rates have remained fairly steady at around 10%. The percentage of cases in 2019 in which settlement was achieved was 9.13%.

Settlement rates of all civil litigation cases closed from 2008 to 2019

Source:Judicial Yuan

Settlement rates in copyright, patent and trademark litigation cases have shown a downward trend since 2008. But from 2012, the rate has remained fairly steady at about 10%. Settlement rates in patent cases have been the lowest among the three major litigation categories being consistently under 10% from 2012 through 2019, and only 3.8% in 2018. The settlement rates for copyright and trademark cases were slightly higher at approximately 12% in the same period.

Settlement rates for copyright, patent and trademark litigation cases closed from 2008 to 2019

Source:Judicial Yuan

The data in this part of the report provides insights into the outcomes of civil litigation cases before the IP Court as well as the different characteristics with regard to copyright, patent and trademark cases. For instance, it is apparent that win rates in patent cases are comparatively low, that it is more difficult to overturn a patent decision on appeal, and that few patent cases are settled. With regard to copyright cases, we can see that awards are comparatively smaller. In trademark cases, plaintiffs enjoy a higher win rate in the first instance, but face a greater likelihood of revocation in the second instance.

In part four of our report we will have a look at interesting statistics related to administrative litigation cases decided upon by the IP Court. You can find parts one and two here.

For more information on IP matters in Taiwan, please contact Gary Kuo at gkuo@winkerpartners.com.

*Sources: (1) Judicial Yuan (2) IP Court (3) DATA.GOV.TW.

*Note: Some of the figures provided in this report are calculated using raw data and may differ from those figures officially reported.

 

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