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Security interests in IP rights in Taiwan

by Betty Chen

Security interests in IP may be recorded with the Taiwan Intellectual Property Office (TIPO) as a pledge, either by the rights owner or by the pledgee. The recordal of IP security interests in Taiwan only applies to registered trademarks or granted patents. A pending trademark or patent application may not be the subject of a pledge. It should be noted that an unrecorded pledge may not be asserted against third parties. Also, where a pledge on IP rights is altered or extinguished, the same should also be recorded with the TIPO.

A short-form version security agreement is acceptable for recording a pledge. The value of the pledge must, however, be indicated in the agreement. The pledge documents need not be notarized or legalized.

In order to obtain a first priority security in IP rights, before recording a pledge, rights holders should first conduct searches for senior pledges on the register that may affect their rights. To maintain the validity of the IP rights pledged, the security agreement should specify which party is obligated to pay the renewal or annuity fees for said rights. A pledge of rights recorded with the TIPO remains effective in perpetuity unless it is terminated.

Acquiring a security interest in trademarks or patents by means of a pledge is a straightforward and inexpensive means of leveraging intellectual property assets in Taiwan.

For more information on patent matters in Taiwan, please contact Peter Dernbach at pdernbach@winklerpartners.com or Betty Chen at betty@winklerpartners.com.

 

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