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In-depth treatment of selected topics in Taiwan law for legal professionals

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.

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

Introduction

In Part 3 of the report, 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

“Median” refers to the value separating the upper and lower halves in a sequence arranged in ascending order. For example, if we array the amounts of claims of 101 cases in ascending order, the amount of the 51st claim is the median. That is, there are 50 cases with an amount claimed less than the 51st case.

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. 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 the next part of the report we will have a look at interesting statistics related to administrative litigation cases decided upon by the IP Court.

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.

Enforcing foreign judgments in Taiwan

In June 2020, the United States Court of Appeals for the Fifth Circuit affirmed a U.S. $439 million judgment against Taiwan-based technology company Quanta Storage Inc. (“Quanta”) for antitrust violations. To satisfy the judgment, the Fifth Circuit ordered Quanta to surrender all of its assets, including cash, equipment and intellectual property rights. Ultimately, Quanta settled with the plaintiff, HP Inc. (“HP”) after the judgment was delivered. Nonetheless, one issue that has lingered and inspired debate is had the sides not settled, whether and how the judgment could be enforced in Taiwan, where Quanta is incorporated and most of its assets are located.

As a result of globalization, individuals and corporations often have assets in places other than their home country. Likewise, parties to a legal dispute often have assets outside the jurisdiction in which judgment against them is rendered. In Taiwan, the demand for enforcement of foreign judgments has been on a steady rise. Since 2015, courts in Taiwan have handled close to 50 such cases.

This article offers an introduction to the current mechanism and key considerations on enforcing foreign judgments in Taiwan. Please note that “foreign judgments” as defined in this article do not include those rendered by courts in China. Judgments involving parties from China are dealt with under the Act Governing Relations between the People of the Taiwan Area and the Mainland Area. For more information on enforcing those judgments, please refer to this article.

Procedural Overview

Generally, a final court judgment produces two distinct effects. First, the doctrine of res judicata gives the judgment preclusive effect and prohibits the original claimant’s re-litigation of the claims upon which judgment was rendered. Second, the executability of the judgment makes it enforceable. Under Article 402 of the Taiwan Code of Civil Procedure (the “Procedure Code”), Taiwan automatically recognizes the preclusive effect of foreign judgments except under certain circumstances. By contrast, there is no automatic recognition of foreign judgments’ executability in Taiwan. Under Article 4-1 of the Compulsory Enforcement Act, a foreign judgment must receive an “approving judgment” from a court in Taiwan to be enforceable.

Anyone seeking to enforce a foreign judgment must first file an “approving action” with a court in Taiwan. In terms of where to file, the court sitting in the judicial district where the foreign judgment debtor resides is competent to hear such actions. Thereafter, the court examines whether any of the circumstances under Article 402 of the Procedure Code exists. If so, the foreign judgment is unrecognizable and thus unenforceable. If not, the foreign judgment will be recognized with an approving judgment, and the creditor can file for compulsory enforcement. The following flowchart illustrates the procedure discussed above:

The most critical aspect of the recognition and enforcement procedure is judicial examination under Article 402 of the Procedure Code. The next section offers a detailed analysis of the examination.

Article 402 of the Procedure Code

There are four circumstances under which a foreign judgment is unrecognizable and thus unenforceable. We discuss each circumstance in turn below.

1. The foreign court lacks jurisdiction

The foreign court must have had jurisdiction, as determined under Taiwan law, to hear the original dispute and enter judgment. Often, approving actions are dismissed for this reason because of the existence and breach of a forum selection clause. Say we have a contract dispute between a U.S. plaintiff and a Taiwanese defendant. The plaintiff files suit in a Canadian court, which enters judgment for the plaintiff. The plaintiff then files an approving action with a court in Taiwan for recognition and enforcement. Under the Procedure Code, if the contract that gave rise to the original dispute includes a choice of forum other than the Canadian court (e.g. a U.S. federal court), then the Canadian court’s judgment is unrecognizable and unenforceable. Therefore, parties looking to sue abroad and enforce judgments in Taiwan would be well advised to first become familiar with Taiwan’s jurisdictional rules before proceeding with suit.

2. The foreign judgment is a default judgment against the defendant

This is the most common circumstance under which a foreign judgment is unrecognizable. Under the Procedure Code, foreign default judgments are recognizable only if the notice or summons of the initiation of action had been legally served in a reasonable time in the foreign country or had been served through judicial assistance provided under Taiwan law.

In terms of exemptions, there are two conditions which are service in the foreign country, and service in Taiwan. Courts in Taiwan generally recognize service of process in a foreign country if it is legal where carried out. However, as a matter of policy, courts in Taiwan have in the past refused to recognize substituted service in foreign countries, because such a method denies the defendant the opportunity to receive the physical notice or summons in person. It is thus best to ensure that the defendant or defendant’s counsel receive the notice or summons in person.

As for service in Taiwan, the Taiwan Supreme Court has held that service in Taiwan must be made in accordance with the procedures set out in the Law in Supporting Foreign Courts on Consigned Cases. Without it, service is ineffective even if the defendant in fact received the notice or summons via direct mail.

Most of the approving actions dismissed in the past five years are default judgments rendered without effective service of process. Therefore, it is essential to ensure that process is legally served before proceeding with any legal action abroad where subsequent enforcement in Taiwan is foreseeable.

3. The relief granted by such judgment or its litigation procedure is contrary to public policy or morals under Taiwan law.

The Taiwan Supreme Court has held that although courts in Taiwan generally do not inquire into the validity of foreign judgments, in order to maintain public policy and protect public morals, courts can undertake limited review of foreign judgments. Examples of unrecognizable judgments on public policy or morality grounds include transferring illegal goods and approving bigamy.

One particularly controversial issue is punitive damages. As a matter of policy, Taiwan only recognizes actual injury or loss to the plaintiff’s person or property as valid bases for relief. As such, a damage award greater than the plaintiff’s actual loss is likely to be deemed punitive under Taiwan law. In practice, a court ruling on an approving action for a punitive damage award would likely only approve the amount equal to the plaintiff’s actual loss and not recognize any amount in excess thereof. That said, Taiwan law does provide for punitive damages in select types of cases, such as those under the Fair Trade Act and the Consumer Protection Act, with awards up to three times the plaintiff’s actual loss. The Taiwan Supreme Court has ruled that if a foreign judgment is based on facts that would give rise to punitive damages under Taiwan law, and the amount of the award does not exceed three times the plaintiff’s actual loss, the judgment would not be contrary to public policy.

In the Quanta case mentioned at the beginning of this article, Quanta’s counsel contended on appeal that the $439 million judgment was a punitive damage award as it was triple the amount of HP’s alleged loss. Several Taiwanese legal commentators echoed the contention, raising skepticism as to whether HP could enforce the entire judgment in Taiwan. On the other hand, the U.S. District Court that had rendered the original treble damage award against Quanta opined that the award was in fact compensatory in nature, because U.S. antitrust law expressly allows for the tripling of damage awards. It remains to be seen whether a court in Taiwan would accept such an interpretation and recognize the judgment.

In addition to punitive damages, other judicial orders that may offend public policy or morals under Taiwan law include the allocation of attorney fees and the rate of prejudgment interest. In general, courts in Taiwan do not award attorney fees to the prevailing party in a suit unless the case is in the third instance, i.e. before the Supreme Court. The rate of prejudgment interest is usually 5% per annum. However, the Taiwan Supreme Court has held that foreign judgments that include awards of attorney fees and rates of prejudgment interest higher than 5% per annum can still be recognizable for enforcement purposes. Taiwan counsel should be consulted on whether attorney fees and interest are likely to be accepted by the court.

4. There exists no mutual recognition between the foreign country and Taiwan

The concept here is straightforward. The Procedure Code already provides for automatic recognition of foreign judgments’ preclusive effect. Therefore, the general principle of courts in Taiwan is to recognize the executability of foreign judgments as well unless extraordinary circumstances exist, such as where a foreign court explicitly refuses to recognize judgments rendered in Taiwan.

File for compulsory enforcement

Upon obtaining an approving judgment, the foreign judgment creditor can file for compulsory enforcement with a court in Taiwan. The filing must include both the foreign judgement itself and the approving judgment. The former provides the content and amount of the judgment, while the latter proves that the judgment is enforceable in Taiwan.

Moreover, if the foreign judgment award was calculated in foreign currency, it must be converted into New Taiwan Dollar. The enforcing court normally adopts the exchange rate as of one day before the approving action was filed.

In sum, before enforcing a foreign judgment in Taiwan, an approving judgment must be obtained. Article 402 of the Procedure Code stipulates four circumstances under which a foreign judgment is unrecognizable and unenforceable. It is best practice to become familiar with relevant laws and procedures in Taiwan before filing a claim in a foreign court that might lead to the need for enforcement in Taiwan.

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

Impact investing in Taiwan

Impact investing challenges the traditional view that (i) social and environmental issues are best solved through philanthropy and government policy and (ii) market investments should be primarily focused on the generation of financial return. By using the corporate investment model to organize financial and other resources, impact investments have produced, and will continue to produce, positive social and environmental change that is both measurable and sustainable. On a global basis, impact investors are already providing significant capital to sectors such as renewable energy, microfinance, healthcare, education, and sustainable agriculture.

In Taiwan, awareness of the value of impact investing and the development of social enterprises has been steadily growing over the past several years. As early as 2012, Social Enterprise Insights (“SEI”) launched the first Mandarin-based online information portal focused on social enterprise and innovation. The Taiwan-based portal provides resources related to social innovation and the incubation and development of social enterprises from around the world. SEI fosters the development of social enterprises in the Sinophone world by allowing Chinese readers to learn about and learn from experiences of social enterprises from around the world.

Set out below are a few leading private institutions that are active in the social enterprise space. If you are a budding social entrepreneur or otherwise wish to get involved in this rewarding and growing field in Taiwan, you may wish to contact and get involved with one or more of these organizations.

  1. iLab. Launched by SEI in 2014, iLab is the first social enterprise incubation program in Taiwan. It is based on the U.K.’s UnLtd model and works to bridge the gap between startup competitions and venture capital financing.
  2. B Current Impact Investment Inc. Launched in 2014, B Current Impact Investment Inc. (“BCI2”) is a leading social enterprise in Taiwan focused exclusively on impact investments. Established by professionals with backgrounds from Taiwan and Silicon Valley, BCI2 works with local social entrepreneurs to create investment opportunities attractive to impact investors.
  3. The Social Enterprise Revolving Trust. The Social Enterprise Revolving Trust (“SERT”), founded in 2015, works to create a sustainable social enterprise ecosystem. SERT funds promising social enterprises with the understanding that such enterprises will (i) earn a return for the trust which will be used to fund other social enterprises and (ii) further reciprocate by sharing their experiences and collaborating with other SERT-backed social enterprises.
  4. B Lab Taiwan. B Corps are active and thriving in Taiwan. B Lab Taiwan actively promotes the B Corp mission of promoting “businesses that meet the highest standards of verified social and environmental performance, public transparency, and legal accountability to balance profit and purpose.”  They assist social enterprises gain a better understanding of the B Corp mission, navigate the certification process, and ultimately take their place as an active participant in the growing B Corp community. Our firm is a certified B Corp and is active in the B Corp movement. Please contact us if you are interested in learning more about B Corps in Taiwan.

In addition to private initiatives, the Taiwan government has taken steps to support and foster impact investing and social enterprise development in Taiwan. In 2014, the Executive Yuan launched a three-year Social Enterprise Action Plan (the “SAEP”).  The SAEP aimed at fostering the development of social enterprises in the country through promotion of deregulation, networking, financing, and incubation. Founded in 2017, the Social Innovation Lab continues the government’s social enterprise mission by serving as a one-stop venue for social enterprise related government services.

It is also worth noting that the most recent amendments to the Company Act promulgated in 2018 provide: “When conducting its business, every company shall comply with the laws and regulations as well as business ethics and may take actions which will promote public interests in order to fulfill its social responsibilities”. This additional language makes it clearly legal for companies to pursue purposes other than merely maximizing the financial return of equity holders.

Compared to other countries, impact investing is still in its infancy in Taiwan. There is still much that needs to be done to create and maintain a robust and sustainable ecosystem for social enterprises in Taiwan. However, Taiwan is slowly and surely moving towards this goal. As recently as July 2020, London’s asset management company, Kinnerton Capital, was pursuing sustainable construction in Taiwan. Taiwan’s wind turbine projects in particular have generated significant global interest in sustainable and renewable energy alternatives.

We look forward to the continued growth of impact investing in Taiwan. If you are interested in developing or funding a social enterprise in Taiwan, please contact us.  We are always happy to share our experiences and expertise with other social entrepreneurs and investors.

For more information on impact investment in Taiwan, please contact Gregory Buxton at gbuxton@winklerpartners.com.

PRC investment in Taiwan – things you need to know

Due to the complicated political relationship between the People’s Republic of China (the “PRC”) and the Republic of China (“Taiwan”), Taiwan authorities subject investments from the PRC to requirements and restrictions different than those applicable to investments emanating from other jurisdictions. These requirements and restrictions have broad reach and the penalties for violations can be severe. We have seen a number of foreign investment transactions affected by Taiwan’s PRC investment regulations. Given that these regulations are likely to become more stringent in the near future, we felt it timely to set out for our clients and other readers the basic outline of these regulations and possible impacts on a planned investment transaction.

As mentioned above, the reach of Taiwan’s PRC investment regulations is broad. Regulated investments include those other than the direct purchase of a Taiwan enterprise by a PRC company. The Investment Commission (the “IC”) of Taiwan’s Ministry of Economic Affairs currently includes the following within its definition of “investment”:

  1. contributing capital to, or owning shares issued by, a Taiwan company (excluding investments that are less than ten (10%) of the outstanding shares of a listed company);
  2. establishing a branch, sole proprietorship, or partnership in Taiwan; or
  3. providing loans with maturity periods greater than one year to the enterprises described in items 1 and 2 above.

In August of this year, the IC announced a draft amendment to the Measures Governing Investment Permits to the People of the Mainland Area (the “Draft Amendment”) which, among other things, would expand the IC’s definition of “investment”. According to the changes proposed in the Draft Amendment, mergers and acquisitions with non-listed companies (including the acquisition of specific businesses and/or assets of a Taiwan company) would be considered investments in Taiwan as would any direct control of a Taiwan entity by a PRC entity through contract.

The PRC investment regulations are also broad in their definition of who is considered a PRC investor (and thus subject to regulation). We have seen a number of transactions in which the investor inaccurately determined that it was not a PRC investor, leading to transaction delays, additional costs, and potential criminal liability. A PRC investor is an individual, juristic person, organization, or any other institution from the PRC or its “third-area invested company”. It is the definition of “third-area invested company” that often causes confusion and difficulties. A PRC third-area invested company is any company in a third area (i.e., a jurisdiction other than the PRC or Taiwan) invested by an individual, juristic person, organization, or any other institution of the PRC which directly or indirectly holds more than thirty percent (30%) of the equity capital of such company or which otherwise has control of such company.

The Draft Amendment introduces a new calculation method for determining whether the thirty percent (30%) equity ownership threshold has been exceeded. The existing regulations calculate ownership by multiplying ownership percentages at each level of a shareholding structure. See Figure 1 below. Pursuant to the Draft Amendment, the calculation would be done on a “tier-by-tier” basis. If any enterprise in the shareholding structure were more than thirty percent (30%) owned by a PRC investor, such enterprise would be deemed to itself be a PRC investor and the thirty percent (30%) rule would be subsequently applied to the next tier in the ownership structure. See Figure 2 below.

Despite not meeting the direct equity ownership thresholds described above, a third-area company would be considered a PRC invested third-area company if a PRC investor otherwise maintained control power over such third-area company. The IC considers several factors when determining whether a PRC investor has such control, including whether the PRC entity has control (i) over the majority of voting power of the equity owners or the directors[1] or over the appointment and discharge of a majority of directors[2]; (ii) over the financial, operational, and/or human resource policies by law, regulation, or contract; or (iii) as defined in applicable accounting standards.

Having a PRC investor involved in a transaction can have substantial effects on the transaction and the persons involved.  If a PRC investor is involved, only transactions in certain industries are permissible and may legally proceed. Any investments from a PRC investor into an industry that is not listed in the Positive List of Investments by People of the Mainland Area (the “Positive List”) set by the IC are prohibited. The current Positive List can be found here (Chinese language only).

Even if a proposed PRC investment is within the scope of permissible investments, application must be made to the IC to review and approve the proposed investment. According to the IC’s official website, the average processing time for PRC investment applications is twenty-five (25) to sixty (60) days. However, our team has routinely seen the process last a year or longer. The IC will strictly scrutinize and may place additional restrictions on, or completely prohibit, investments which it believes may (i) have an adverse effect on national security, (ii) be politically, socially, or culturally sensitive, or (iii) involve persons with a PRC military background or related business activities. Additional restrictions may include limiting investments to a maximum equity percentage.

On a practical note, it is important for PRC investors seeking to acquire Taiwan entities either directly or indirectly (e.g., in conjunction with an acquisition of a global or regional business) to take these investment prohibitions and the extended approval process into account at the outset of any transaction. In a bid-auction process, these investment prohibitions and extended timelines can put a PRC investor at a significant disadvantage to any non-PRC competitors. Even in a negotiated transaction, the indirect acquisition of a Taiwan subsidiary or business by a PRC investor could have serious consequences. In addition to affecting the transaction timeline, if the Taiwan business to be acquired operates in an industry not included in the Positive List, the Taiwan business would be required to divest itself of any operations and assets that were involved in the conduct of any and all businesses operating outside of the industries included in the Positive List. In a recent example, a consortium of PRC investors acquired Nexperia, a Dutch company. As a result of the acquisition, Nexperia’s Taiwan subsidiary became a PRC investment. As product design, research and development, and manufacturing of semiconductors, are not within the industries listed in the Positive List, Nexperia Taiwan was required to divest these businesses and was allowed to retain only its electronic component wholesale business in Taiwan.

In addition to divesting portions of the acquired Taiwan business, any investor violating the PRC investment laws and regulations may be ordered to cease or withdraw the investment altogether. Those found to have made an unauthorized PRC investment will also be fined an amount between NT$120,000 (~US$4,125) and NT$25 million (~US$858,560). Managers and directors of the Taiwan entity may also face financial and criminal liability if they approved the investment and knowingly misrepresented the investing entity as a non-PRC investor. Violators may be sentenced to imprisonment for up to three (3) years.

We expect regulation of PRC investment in Taiwan to become more stringent and enforcement more vigorous. Recently, we have been brought on to analyze PRC investment issues for a number of different teams involved in global acquisitions and securities offerings. We have assessed the consequences of such investments and where possible, provided creative structuring solutions to minimize the negative impact of Taiwan’s PRC investment regulations on the relevant transaction. Typically, many more structuring options are available at the planning stages of a transaction compared to the execution stage. If your transaction involves PRC investment into Taiwan, whether directly or indirectly, we highly encourage you to seek expert guidance on these issues as early in the transaction process as possible in order to prevent unintended, negative consequences to your business.

For more information on investment issues in Taiwan, please contact Greg Buxton at gbuxton@winklerpartners.com.


[1] For the purposes of determining control, the third-area company’s board and its directors would be deemed to include not only the nominal board and directors but also any organization (e.g., committee or other group) with the power to control the company’s operations and the members of such committee or group.

[2] Ibid.

How Taiwan’s TAICCA is supporting creative industries

Taiwan Creative Content Agency (TAICCA) is a new government institute under the Ministry of Culture aimed at catalyzing the development of Taiwan’s cultural and creative industries. Taking the Korea Creative Content Agency (KOCCA) as a model for development, TAICCA is expected to focus more on cultivating projects with greater market potential rather than those with purely artistic value. Currently, TAICCA follows two directions in accelerating the Taiwanese cultural and creative industry:

Backing movie production with foreign investment or government subsidies

Taiwanese movie companies who have signed production contracts with a major international production company, such as HBO, Netflix, Warner, NBCUniversal or Disney; or, for those who have been granted an official subsidy from the Taiwanese government, may now apply for a loan from banks backed by TAICCA.

This policy aims to reduce the financial pressure Taiwanese production companies face when a movie is still under production. Local production companies generally may not receive all the investment funds or subsidies up front leading to cash flow issues. Based on the policy, TAICCA will pledge up to 90% of bank loans secured by the local production company, keeping production running. Since the local production companies may now secure a loan from banks before the foreign production company fulfills its investment fund obligations, this policy may also indirectly give the foreign investors more flexibility to set a timeline for approving budgets awarded to local production companies.

Co-investing in creative content ventures with private investors

Another major policy for TAICCA to encourage the development of Taiwan’s cultural and creative industries is through co-investing with private investors. Venture capitalists, financial institutions, investment corporations and other investors who have previously invested in creative industries (content distributors, platforms and production companies, for example), may apply for co-investment with TAICCA in establishing creative content ventures by leveraging the National Development Fund.

Studio 76, a new venture dedicated to over-the-top (OTT) TV series production established in 2019 sets an example for this policy. It’s reported that paid-in capital totals TWD130 million, Taiwanese streaming music service KKBOX invested TWD55 million, Japan’s Asahi Broadcasting Group invested TWD30 million and the National Development Fund invested TWD45 million.

Unlike the Ministry of Culture that supports the industry through direct subsidies, TAICCA’s main objective is to accelerate Taiwan’s cultural and creative industries through connecting creative content producers with private investors on one hand, and lowering the barrier for loans from private banks on the other.

However, there are also some special subsidies offered by TAICCA for businesses that integrate emerging technology and creative content, such as VR and motion pictures. TAICCA is currently focusing its attention on movie production compared to other kinds of creative content, in large part because movie production may integrate and accelerate other forms of intellectual property. For those who are interested in the film making business in Taiwan, TAICCA’s next steps are sure to be worth following.

For more information on Taiwan’s creative content industry or intellectual property matters, please contact Gary Kuo at gkuo@winklerpartners.com.

Five important issues to consider when investing in or partnering with Taiwanese companies

Whether forming a joint venture company with a Taiwan partner or making an investment in an existing Taiwan company, we strongly recommend clients give careful consideration to the terms and conditions in the operative agreement, be it a joint venture agreement or a shareholders’ agreement. We are routinely asked to review, negotiate, and draft such agreements. In working with these agreements, we invariably identify issues that foreign counter-parties have neglected, the omission of which could have a significant adverse effect on the success of their Taiwan venture. Set out below are important, but often neglected, issues which foreign counter-parties should consider when making an investment or forming a joint venture in Taiwan.

1. Corporate governance procedural defaults

The recent amendment of Taiwan’s Company Act (the “Act”) did a great deal to bring Taiwan’s corporate governance procedures more in line with those in other developed countries. That being said, there are a number of corporate governance procedures which are now allowable pursuant to the Act, but which are not the statutory default. For instance, under the current Act the board of directors may act by written resolution. However, this ability to act by written resolution in lieu of convening a meeting must be explicitly granted in the relevant company’s Articles of Incorporation.The Act requires other corporate governance mechanisms, which foreign counter-parties often take for granted, to be specifically set out in the Articles of Incorporation. In light of this situation, we recommend a thorough review of how the parties plan to govern and operate the Taiwan venture so that we can recommend appropriate amendments to the Taiwan vehicle’s Articles of Incorporation.

2. Statutory preemptive rights

Very often, parties involved in a Taiwan venture wish to restrict share ownership and preserve their initial ownership percentages. The Act grants preemptive rights to each existing shareholder, subject to a requirement that ten (10) to fifteen (15) percent of new equity issuances by a corporation be reserved for purchase by employees (except under very limited circumstances). If the preservation of precise ownership percentages is of paramount importance to the parties, business forms other than a standard corporation could be employed. Alternative business forms each come with their attendant advantages and disadvantages so each would need to be evaluated to determine whether new, more serious, issues were not introduced while attempting to solve the employee preemptive rights issue.

3. Use and control of chops

In Taiwan companies and individuals often use chops instead of signatures. A chop is a stamp or seal that has the same legal effect as a signature. A Taiwan company will have at least one set of chops consisting of the registered chops of the company and its responsible person. These chops can be used to legally bind the Taiwan company, and therefore, their use and control are of great importance. We recommend that at the very least the operative agreement contain basic provisions addressing the custody and permitted use of the company’s and its responsible person’s chops. For larger enterprises with multiple sets of special-purpose chops, we recommend drafting more complete chop control procedures which can be included in the operative agreement as an exhibit.

4. Protection of intellectual property

Often the foreign counterparty is contributing some form of intellectual property right(s) to the Taiwan venture. In such cases, we recommend that the effectiveness of the operative agreement should be made contingent upon the signing of an appropriate intellectual property license agreement which includes, at a minimum, standard confidentiality, non-compete, and non-solicitation clauses. If the foreign counterparty’s intellectual property is of particular value, we often recommend (i) placing an additional affirmative duty on the local Taiwan party(ies) to take reasonable measures to police the local market for infringement of the foreign counterparty’s and/or the Taiwan venture’s intellectual property rights and (ii) making the local Taiwan party(ies) liable for any such infringement of which they were, or should have been, aware but failed to report in a timely fashion.

5. Specification of legal damages

In Taiwan, like many other jurisdictions, liquidated damages are legally permissible. Unlike many other jurisdictions, contractual punitive damages are also permissible in Taiwan. This creates interesting possibilities to erect significant disincentives to potential future bad behavior. While acknowledging that overly liberal use of punitive damage provisions has the potential to sour the relationship between joint venture partners even before the operative agreement is signed, we often recommend strategic use of such provisions particularly in conjunction with the protection of intellectual property rights of a foreign counterparty.

The list set out above represents issues that we see on a routine basis. However, this list is by no means exhaustive. We highly recommend having a lawyer review all agreements to be signed in connection with a foreign joint venture or other form of joint equity investment in Taiwan.

For more information, please contact Greg Buxton at gbuxton@winklerpartners.com.

Exploring statistics at the Taiwan Intellectual Property Court: part II litigation

After taking a look at the caseload of Taiwan’s Intellectual Property Court (“IP Court”) in part one, we now focus on the number of litigation cases and trends over time.

Number of litigation cases closed

“Closed case” means a case decided at the IP Court, regardless of whether the decided case was subsequently appealed or not. The trend of closed litigation cases is similar to the number of all cases closed which we looked at in Part 1. The peak number was 1178 cases in 2011, after that, the number of cases gradually decreased to 862 cases in 2019. The number of closed litigation cases has never exceeded 1000 from 2012 onward.

Number of closed litigation cases from 2008 to 2019

Source:Judicial Yuan

Proportion of copyright, patent, and trademark litigation cases

The statistics show that patent and trademark litigation cases are the majority of all litigation cases handled and since 2014 have accounted for approximately 35% of cases each year. As for copyright litigation, the proportion has remained between 20% and 30%. Except for these three major categories, the proportion of other litigation, such as those involving trade secrets, shows an upward trend from 7% in 2008 to 13% to 2019.

Proportion of closed copyright, patent, and trademark litigation cases from 2008 to 2019

Number of copyright, patent and trademark litigation cases handled

Copyright litigation

The number of closed copyright litigation cases has remained roughly the same. Since 2009 when the IP Court was in full swing, there have been 190 to 240 cases every year, except for in 2017 where there were 157 cases. The peak was 238 cases in 2010. The number of closed copyright litigation cases has increased for three consecutive years, with 210 cases in 2019.

Number of closed copyright litigation cases from 2008 to 2019

Source:Judicial Yuan

In terms of whether the litigation was civil, criminal or administrative in nature, we find that the majority are criminal cases. In 2008 and 2009, criminal cases accounted for 72% and 66% of all cases respectively.

The proportion of civil litigation cases surpassed those of criminal cases in 2014 for the first time, and has been increasing since then. In the last three years, civil litigation cases have accounted for more than 60% of all copyright litigation cases, peaking in 2019 at 78%. It is clear that the mode of solving copyright disputes in Taiwan has transferred from criminal prosecution by the state to civil litigation between private entities.

The proportion of administrative litigation is comparatively low, except for 2013, 2016 and 2018, never having been higher than 5%.

Proportion of closed criminal, civil, and administrative copyright litigation cases from 2008 to 2019


Patent litigation

The number of patent litigation cases solved has shown a downward trend since the highest period from 2010 to 2011, with 476 and 462 cases. Although there were years with more than 300 cases between 2012 and 2015, the number has never exceeded 300 since 2016. There were 267 patent litigation decided in 2019.

Number of patent litigation cases closed from 2008 to 2019

Source: Judicial Yuan

Only civil and administrative cases are included since there is no criminal liability under Taiwan’s Patent Act. Apart from 2008 where there was a higher proportion of administrative litigation, patent litigation was roughly 60% civil, 40% administrative.

Proportion of closed civil and administrative patent litigation cases from 2008 to 2019


Trademark litigation

The number of trademark litigation cases was comparatively high between 2009 and 2011, with a peak of 390 cases in 2009. There has been a downward trend until 2007 with 248 cases, but the numbers have risen in the last two years. The number of trademark litigation cases handled was 279 in 2019.

Number of closed trademark litigation cases from 2008 to 2019

Source:Judicial Yuan

Administrative litigation has always been the primary type of trademark litigation, accounting for more than half among all trademark litigation every year. It appears to be a decreasing trend in recent years, even though administrative litigation still accounts for 53%, its lowest point reached in 2019. The proportion of criminal litigation has gradually reduced from 25% in 2008 to 13% in 2009. The proportion of reduced criminal and administrative litigation has been replaced by civil litigation, whose proportion has doubled from 17% in 2009 to 34% in 2019. Overall, administrative litigation accounts for the largest volume of cases, while criminal litigation accounts for the smallest.

Proportion of closed criminal, civil, and administrative trademark litigation cases from 2008 to 2019


By looking at these statistics, we now know more about the quantity and type of litigation cases at the IP Court. The proportion of criminal, civil and administrative litigation cases provides interesting insights into each type of litigation. In the next part, we will focus on civil litigation and further explore statistics regarding the success rate, settlement rate and claims awarded.

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

This article was co-written by trainee lawyer Yi-kai Chen.

*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.

An update on Taiwan’s regulatory fintech sandbox

The regulatory sandbox was set up in Taiwan two years ago. The Financial Supervisory Committee (FSC) announced that since then, there have been 13 applications with seven of them permitted to start their business under the regulatory sandbox framework.

Two of the seven permitted applications have accomplished their set targets, and therefore, have already “graduated” from the regulatory sandbox. These applications are the KGI Bank’s implementation of an online personal unsecured loan service based on cell phone bill payment records; and Fubon Bank’s interbank transfer and payment system based on blockchain technology. The FSC is considering modifying the regulations based on the result of KGI Bank’s application. Once the regulations have been amended, the business model for KGI Bank’s online personal unsecured loan service may be adopted by other banks.

The FSC has stated that Fubon Bank will probably begin a new sandbox application extending its blockchain technology for international bank transfers. It’s expected that the current regulations for inter-bank or international transfers will not be amended before the filing of the second round of Fubon Bank’s regulatory sandbox application.

The trial operation of innovative financial services is becoming more popular in the financial sector. Those with bank licenses, or those already cooperating with banks, are finding it easier to test out new ventures, which are not in conflict with current regulations, through this channel.

These developments are good news for companies that are looking to take part in Taiwan’s push for innovation and growth. If you or your company would like to know more about the regulatory sandbox or the trial operation for financial sector businesses, you can take a look at our earlier overview here.

If you have specific questions about whether your business qualifies for the sandbox and how to apply, please contact Christine Chen at cchen@winkerpartners.com.

Exploring statistics at the Taiwan Intellectual Property Court: part I overview

Since its inception in 2008, the Intellectual Property Court (“IP Court”) has heard thousands of civil, criminal and administrative actions concerning Intellectual Property Rights (“IPR”). In part one of this report, we examine statistical data from multiple sources*, shedding light on the operations of the IP Court over the past twelve years.

The IP Court

The IP Court was established on 1 July 2008 as Taiwan’s first specialized court with the aim of improving IP law enforcement, the protection of IP rights, and promoting national economic development.

The IP Court exclusively hears IPR cases, mostly relating to the Copyright, Patent, Trademark and Trade Secret Acts. In terms of jurisdiction, the IP Court is the court of first and second instance for civil actions, the court of second instance for criminal actions (i.e. appeals against District Court decisions in the first instance), and the court of first instance for administrative actions.

Number of judges and amount of cases

There are currently 14 judges at the IP Court, including 8 male and 6 female judges. The number of judges has almost doubled from the original 8 presiding at the establishment of the IP Court. The proportion of female judges has gradually increased over the years, with female judges outnumbering male judges from 2014-2016.

Number of judges from 2008 to 2019

Source: Judicial Yuan

Numbers of cases closed by each judge per month

As of March 2020, a total of 16,208 cases, litigation and non-litigation, have been lodged with the IP Court. Of these, the IP Court has closed 15,717 cases. Since 2009, when the IP Court was in full swing, an average of about 2,000 cases have been lodged every year. The peak number was 2,380 cases in 2010. The number of cases gradually decreased from 2010 to 2017, but has again increased in the past two years. Please note that the number of cases lodged in particular year include cases previously lodged but not closed as well as newly lodged cases.

The IP Court closes approximately 70% of cases lodged per year.

We now turn to the average number of cases handled by each IP Court judge per month. In 2009 and 2010, due to the large number of cases and comparatively lower number of judges, the burden on each judge was as heavy as 17 to 20 cases to be closed per month. But after 2011, with the general decrease in the number of cases and increase in the number of judges, the average number of cases per judge went down to 7 to 8 cases per month. There has been an upward trend in the number of cases per judge in the past two years.

Number of cases and average number of cases closed by each judge per month from 2008 to 2019

Source: Judicial Yuan

Proportion of civil, criminal and administrative cases handled

The IP Court hears civil and administrative IPR cases, as well as appeals in criminal IPR cases. Statistics on closed cases show that by proportion, most cases heard by the IP Court are civil suits. From 2008 to 2019, the proportion of civil cases has gradually risen from 41% to 63%. The remaining cases are split equally between criminal appeal cases and administrative cases, with about 20% each in recent years.

Proportion of civil, criminal and administrative cases closed from 2008 to 2019

Source: Judicial Yuan

Average number of days to close a case

The average number of days for a case before the IP Court from lodging to closing gradually increased from 114.87 days in 2009 to 209.14 in 2015, the highest on record. From 2016 to 2018 the average time to a decision was about 200 days, but this dropped to 182.45 days in 2019.

Average number of days to close a case from 2008 to 2019

Source: Judicial Yuan

Comparing the time required to disposition of civil, criminal and administrative cases before the IP Court, it is clear that civil cases are the most time consuming. Since the establishment of the IP Court, the number of days to disposition for a civil case has continuously gone up, peaking in 2015 at 267.68 days. From 2016 to 2019, the IP Court has steadily reduced the length of time it takes for a case to be closed. In 2019, the number of days to disposition of a civil case fell below 200 days.

As for criminal cases, the number of days to disposition has slowly increased from 88.96 days in 2009 to 142.43 days in 2019. The trend for administrative cases is similar, from 130.27 days in 2009 to 190.87 days in 2019.

Overall, criminal cases take the fewest days to a decision, while civil cases take the most. But in the last two years, the number of days to disposition for administrative cases has exceeded or equaled that for civil cases.

Average number of days to close a case from 2008 to 2019

Source: Judicial Yuan

The above statistics provide some interesting insights into the general operations of Taiwan IP Court. We will have a closer look at IP litigation statistics in part two of this report.

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

This article was co-written by trainee lawyer Yi-kai Chen.

*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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