Taiwan and China Have Signed the Cross-Strait Intellectual Property Right Protection Cooperation Agreement

09/10/2010

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On 29 June 2010, Taiwan’s Straits Exchange Foundation and the Mainland China’s Association for Relations Across the Taiwan Straits signed the Cross-Strait Economic Cooperation Framework Agreement (“ECFA”) and the Cross-Strait Intellectual Property Right Protection Cooperation Agreement (the “IPR Agreement”). Together, these two agreements will enhance the steady development of cross-strait economic and trade relations, improve the cross-strait business environment, and allow Taiwan to gain access to the international market. For the content of the IPR Agreement, please refer to the attached English translation of the IPR Agreement.
The signing of the IPR Agreement will promote cross-strait cooperation and exchanges on matters relating to intellectual property rights. In particular, both parties’ agreement on "priority claim right" addresses a matter that has long been concerned by multinational companies and IP proprietors. That is, patent, trademark and plant variety right proprietors are currently not able to claim priorities for their patent, trademark and plant variety applications filed in Taiwan which involve applicants from China or involve patent, trademark and/or plant variety right applications first filed in China (as priority applications). On the other hand, China does not accept priority claims for the above-mentioned applications filed in China, which involve applicants from Taiwan or involve corresponding basic applications first filed in Taiwan (as priority applications). The IPR Agreement, once taking effect, shall provide a solution. After the IPR Agreement was signed, on 30 June 2010, the Taiwan Intellectual Property Office (TIPO) held a public hearing explaining the content of the IPR Agreement; the TIPO advised that, based on the agreement regarding priority claim rights under the IPR Agreement, the TIPO plan to accept priority claims based on corresponding Chinese patent and trademark cases by not only nationals from Taiwan and China, but also applicants from other foreign countries that have formed reciprocity with Taiwan for priority claim matters. The TIPO also advised that recognition of such priority claim rights, once becoming effective, shall unlikely apply retroactively and the TIPO would accept priority claims made after the IPR Agreement takes effect. The above-mentioned TIPO’s opinion is not final yet, but it may possibly reflect the implementation scheme of recognition of priority claim rights under the IPR Agreement. On the other hand, China will decide how to deal with priority claims made in China by applicants from Taiwan, China and other countries. In any event, priority claim rights, once becoming available under the IPR Agreement, will provide more flexibility and advantages to those seeking patent, trademark and plant variety protection.
As far as the Taiwan side is concerned, the IPR Agreement was delivered to the Legislative Yuan for review and, on 17 August 2010, the Legislative Yuan approved the IPR Agreement as well as the corresponding law amendments (including amendments of Articles 27 & 28 of the Patent Act, Article 4 of the Trademark Act and Article 17 of the Plant Variety and Plant Seed Act which are related to the reciprocity basis for claiming priority). On 18 August 2010, the TIPO made a public announcement stating the following: The implementation details of the IPR Agreement will be subject to Taiwan's further negotiation and discussion with China. Taking "patent and trademark priority claim" as an example, the topics that need to be discussed between Taiwan and China include the implementation date of mutual recognition of priority claims between Taiwan and China, the possibility for foreign applicants to claim priority claims based on their patent/trademark applications first filed in Taiwan or China, the possibility of accepting priority claims retroactively, electronic exchange of priority documents between Taiwan and China, etc. We will continue monitoring and keep our clients informed of further development.
If you have any questions, please do not hesitate to contact us. Sincerely yours, LEE AND LI
Attachment
Cross-Strait Intellectual Property Right Protection Cooperation Agreement (Translation Prepared by Lee and Li Attorneys-at-Law)
1.	Objectives
	Taiwan and China (the “Parties”) agree, on the basis of equality and reciprocity , to enhance cross-strait information exchanges and cooperation relating to the protection of the Parties’ patents, trademarks, copyrights, and plant patents (together, “Intellectual Properties”), to resolve disagreements through negotiations, and to strengthen the creation, application, management, and protection of Intellectual Properties.
2.	Priority Claim Rights
	The Parties agree to recognize, according to their respective regulations, the date of the patent application, trademark application or plant variety right application first filed in each other’s jurisdiction, and to take steps to protect the priority claim rights of people from China and Taiwan.
3.	Protectable Plant Variety Rights
	The Parties agree to accept plant variety applications filed according to their respectively announced plant variety categories allowable for plant variety protection. The Parties further agree to continue negotiations on expanding protectable plant variety categories.
4.	Cooperation in Respect of Patent Examination
	The Parties agree to promote the cooperation and negotiations related to mutual utilization of the results of patent searches and patent examination as well as the examination and testing of plant variety right applications.
5.	Industry Cooperation
	The Parties agree to encourage the cross-strait cooperation amongst industries from both sides in respect of patent, trademark etc. so as to provide efficient and convenient services.
6.	Copyright Certification Services
	In order to promote cross-strait copyright trade, the Parties agree to establish a cooperative mechanism for copyright certification cooperation, such that when video or audio products from one party are published in another’s jurisdiction, the party may specify the relevant association(s) or group(s) that would handle copyright certification. The Parties also agree to exchange comments on formulating standards for certification of books, computer programs, and other works.
7.	Collaborative Enforcement Mechanisms
	The Parties agree to establish collaborative enforcement mechanisms to address, pursuant to their respective laws and regulations, the following matters related to protection of intellectual properties:
	(1)	Crackdown on counterfeits and piracies and, in particular, target and take actions against websites that provide or help to provide through Internet pirating books, audio and visual products, computer programs, and target and take actions against counterfeits and piracies in the market;
	(2)	Protect well-known/famous trademarks, geographic indications, or names of places famous of supplying specific products, jointly prevent and stop malicious registrations, and protect legitimate owners’ right to file revocation against the registration maliciously made for such well-known/famous trademarks, geographic indications, or names of places famous of supplying specific products;
	(3)	Strengthen market regulation and enforcement against false marking of product origins for fruits and/or other agricultural products; and
	(4)	Make arrangements for protection of other intellectual property rights not mentioned in this paragraph.
8.	IP Business Cooperation & Exchanges
	The Parties agree to explore exchanges and cooperative initiatives in the following areas related to intellectual property right protection:
	(1)	Promote the cooperation amongst authorities from the Parties to develop relevant business training programs through working meetings, special project meetings, visits, exchange of experience and technology, holding conferences and so on;
	(2)	Share institutional standards, databases (data and literatures), and other relevant information;
	(3)	Promote cooperation regarding electronic exchange of documents;
	(4)	Encourage exchanges and cooperation amongst copyright collective management organizations;
	(5)	Enhance education programs to relevant industries, agents, and general public; and
	(6)	Cooperate on other matters mutually agreed upon by the Parties.
9.	Work Plan
	The Parties agree to establish working groups on patent, trademark, copyright, plant variety right etc. to work on detailed implementation plans and proposals.
10.	Confidentiality
	The Parties agree to hold confidential any information obtained in the course of their activities pursuant to the IPR Agreement. The above does not apply to uses of information for purposes of achieving the specific requests agreed upon.
11.	Limitation of Uses
	Except otherwise agreed upon by the Parties, the Parties agree to limit the use of any information provided by the other to the purpose of requesting the said information.
12.	Document Format
	The Parties agree to use the document formats as mutually agreed upon in correspondences, notifications, inquiries, and daily contacts.
13.	Principal Contact
	The respective authorities of the Parties shall designate the contact person(s) for communications relating to matters agreed upon in the IPR Agreement. When necessary, the Parties may, upon mutual consent, designate other authorities as contacts.
	The Straits Exchange Foundation and the Association for Relations Across the Taiwan Straits shall coordinate on all other matters related to the IPR Agreement.
14.	Performance and Amendments
	The Parties shall abide by the IPR Agreement.
	Amendments to the IPR Agreement shall be in writing and agreed upon by both Parties.
15.	Dispute Resolution
	The Parties shall promptly act in resolving any disputes arising out of the IPR Agreement.
16.	Unmentioned Matters
	Matters that are not addressed in this Agreement shall be separately negotiated by the Parties.
17.	Effective Date of IPR Agreement
After the signing of the IPR Agreement, the Parties shall separately ratify this agreement and keep each other informed in writing. The IPR Agreement will become effective on the day next to the date on which the Parties have received each other’s notification.