WORLD TRADE
ORGANIZATIONIP/C/W/379
16 September 2002
(02-4888)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Questions by the United States
By means of a communication from the Permanent Mission of the United States, dated
29 August 2002, the Secretariat has received copies of the following questions that the United States
has communicated to the Separate Customs Territory of Taiwan, Penghu, Kinmen and Matsu.
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The following are based in part on the Report of the Working Party on the Accession of the
Separate Customs Territory of Taiwan, Penghu, Kinmen and Matsu (WT/ACC/TPKM/18), and the
Checklist of Issues on Enforcement (IP/N/6/TPKM/1).
A. GENERAL
1. Please describe, in relation to each form of intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which your government provides
national treatment and most favoured nation treatment to nationals of other WTO Members.
B. COPYRIGHT AND NEIGHBOURING RIGHTS
2. We have a number of questions regarding specific provisions of your government's copyright
law and its consistency with relevant TRIPS provisions.  We understand that the Chinese Taipei
government is presently considering a new draft copyright law, and it appears that there are a number
of issues with respect to the draft's consistency with relevant TRIPS provisions.  In particular:
(a) Article 3(5) of the present copyright law contains a definition of "reproduction" that
does not explicitly cover "temporary" reproductions, such as those made in therandom access memory (RAM) of a computer, as required by Berne Article 9, as
incorporated into TRIPS Article 9.  Please explain how this draft article explicitly
covers such "temporary" reproductions, such that it complies with TRIPS Article 9?
We understand that MOEA's position is that temporary copies are already implicitly
considered reproductions under the curren t definition.  Please explain how MOEA's
position has been adopted by the administrative agencies or the courts, providing
detailed descriptions of actions taken or case citations.
(b) Article 7 bis of the present copyright law limits protection of performances to those of
"pre-existing" works, even though a protected performance under TRIPS may be of a
work created simultaneously with the performance.  Please explain how yourgovernment provides protection of performances of works other than "pre-existing"
works, as required by TRIPS.IP/C/W/379
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(c) It appears that Article 22 of the most recent draft does not give performers the right to
control the unauthorized fixations of their performances, as required by TRIPS.
Please explain how your government protects performers' rights to control the
unauthorized fixations of their performances.
(d) It appears that clause 2 of Article 56 bis of the most recent draft provides a complete
exemption for retransmission of free over the air broadcast signals of works.  Under
TRIPS Article 9 (which incorporates Article 11 bis of the Berne Convention), the
retransmission of broadcast signals is subject to an  "exclusive" economic right.
Please explain whether your government has plans to delete clause 2 of Article 56 bis,
or if not, how Article 56 bis can comply with Article 11 bis of the Berne Convention,
as incorporated into TRIPS Article 9.
(e) Article 51 of the present copyright law contains an overly broad personal use
exception.  Please describe how your government will ensure that this exception will
be applied in compliance with TRIPS Article 13, particularly in regard to digital
technologies.  Please explain whether your government plans to limit the exception
by permitting a single, analog, copy for personal and private use.
(f) Article 106 ter and quater  of your present copyright law provide a broad two-year
transition period for the protection of WTO members' works and other subject matter.
Please explain how these articles comp ly with TRIPS Articles 9 and 14 (which
incorporate Article 18(3) of the Berne Convention).
C. TRADEMARKS
3. Please explain how your trademark law pr ovides for a presumption of likelihood of
confusion, as required by Article 16.1 of the TRIPS Agreement, where an identical mark for identical
goods and services is used without authorization on identical goods or services, and cite to the
relevant provision.
4. Please explain whether and how your trademar k and other laws ensure protection of well-
known trademarks and service marks, citing to the relevant provisions of law.
D. GEOGRAPHICAL INDICATIONS
5. Please describe in detail how and under what laws geographical indications are protected in
Chinese Taipei and cite to the relevant provisions of law.
6. Do the provisions of your law regarding geographical indications provide for any of the
exceptions to protection of geographical indications contained in Article 24 of the TRIPS Agreement,
and, if so, please describe the way in which the exception is applied and cite to the relevant provisions
of law.
E. INDUSTRIAL DESIGNS
7. Please describe in detail the way in which industrial designs, including textile designs, are
protected under your government's laws  and regulations and cite to the relevant provisions.
F. PATENTS
8. Article 33 of the TRIPS Agreement requires that patents have a term of protection that does
not end before a period of twenty years measured from the date of filing.  Please describe the term ofIP/C/W/379
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protection for patents available under your government's patent law and indicate if there is any
variation in that term, in particular based on the date of the patent application.
G. PLANT VARIETIES
9. Please describe in detail the manner in which plant varieties are protected under your laws
and cite to the relevant provisions.
H. LAYOUT -DESIGNS FOR INTEGRATED CIRCUITS
10. Please describe in detail how your government implements the obligations of section 6, Part II
of the TRIPS Agreement and cite to relevant provisions of law.
I. UNDISCLOSED INFORMATION
11. Please provide detailed information on the way in which data submitted to your  government
to obtain marketing approval for pharmaceuticals and agricultural chemicals is protected against
unfair commercial use.  We are seeking to learn, for example, for undisclosed information related towhich products qualifies for protection, the durati on of such protection, and the treatment accorded
others seeking to obtain marketing approval for an equivalent product.  In our view, such protection
should be available to all products contain a new chemical entity whether the product is patented or
not.  How does your government prevent an entity that has not produced its own data from relying on
the data submitted by another?
J. E
NFORCEMENT
1. General Obligations
12. The level of optical disk media piracy in Chinese Taipei continues to be high despite the
recent enactment of an optical disc law.  It has been reported that losses to the copyright industries has
totaled over $333 million in 2001 as a result of OD piracy.  It is has been further reported thatChinese Taipei has at least 61 known optical media plants (and nine or more underground plants),
containing over 1,187 replication lines, includ ing 93 DVD lines, 229 VCD/CD lines and 865 CD-R
lines, engaged in the manufacture of finished optical media products, including CDs, CD-ROMs,
VCDs, DVDs, and "burned" CD-Rs, as well as blank media, including blank CDs, CD-Rs, CD-RWs,
DVD-Rs and DVD-RWs.  Total potential production capacity of the plants (not including the CD-R
capacity) is 1.127 billion, dwarfing the 40 million unit legitimate domestic demand.  Please explain
how Chinese Taipei's enforcement system is applied in practice to provide expeditious remedies
against infringement found at any of the plants, as required by TRIPS Article 41.1.  Please describe
how the laws in Chinese Taipei are applied in practice to provide deterrence against optical media
piracy, as required by TRIPS Article 41.1.  Please explain in detail how Chinese Taipei can be in
compliance with its enforcement obligations, pursuant to TRIPS Article 41.1 given high rates of OD
piracy.
2. Civil and Administrative Enforcement
13. Article 87(2) of the present copyright law requires proof of an "intent to profit," and the
apparent requirement that the infringer have actual  knowledge in order for civil liability to attach.
Please describe how Article 87(2) can comply with TRIPS, which does not permit conditioning a civil
infringement on having a profit motive.  Also, please describe whether your government plans tosubstitute the apparent actual knowledge requirement with the test of whether the defendant "knew or
ought reasonably to have known" that the act or copy was infringing.IP/C/W/379
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14. Article 87(5) of the present copyright law provides that it is an infringement to engage in
"end-user" infringement if it was motivated by "direct profit."  Please describe how this article can
comply with TRIPS Article 41.  Please describe whether your government intends to amend
Article 87(5) such that it is enough that the unauthorized use of software is done in a "business
context."
15. It appears that the present copyright law contains no remedy providing for disposal of or
destruction of infringing goods, or of materials and implements the predominant use of which has
been in the creation of the infringing goods, as required by TRIPS Article 46.  Please explain how
your law complies in practice with the requirements of TRIPS Article 46.
3. Criminal Enforcement:
TRIPS Article 61 requires the application of criminal fines and imprisonment at levels
sufficient to provide a deterrent at least in cases of wilful piracy or counterfeiting on a commercialscale.
16. Piracy is not a "public crime" under your law except in limited cases (such as for habitual
offenders).  Please explain how your law complies with TRIPS Articles 41 and 61 by providing
"deterrent" fines and imprisonment without making piracy a "public crime."
17. It appears that the draft copyright law  contains low fines in the criminal provisions (up to
NT$500,000).  Please explain how the fines provide deterrence by lowering piracy levels.  Please
explain how your government complies with TRIPS Article 61 without increasing penalties to more
"deterrent" levels.
18. The present copyright law does not appear to make it a crime to possess in the course of, in
connection with, or for the purpose of trade or business an infringing article.  Does your government
plan to amend its law to add a crime of possession in the course of, in connection with, or for the
purpose of trade or business an infringing article, in order to criminalize end-user piracy of software
and other copyrighted subject matter?
19. It appears that Article 91 of the most recent draft copyright law requires proof that the
defendant intended to profit in order for criminal li ability to attach.  Please explain how the "intent to
profit" standard in the draft complies with TRIPS Article 61, which requires criminal liability to be
available for at least "copyright piracy on a commercial scale."   Are there plans to remove the "intent
to profit" criteria from both civil and penal provisions of the draft copyright law?
20. It appears that the most recent draft law contains no confiscation remedy with respect to
infringing goods and any materials and implements the predominant use of which has been in the
infringement or a crime under the draft, as required by TRIPS Article 61.  Does your governmentintend to reinsert the previously deleted Article 98 (which provided a confiscation remedy).
Otherwise, please describe how your  law provides a confiscation remedy in practice, in line with the
requirements of TRIPS Article 61.
21. We would appreciate statistical or other information on the following issues:
(i) the number of criminal investigations initiated for copyright piracy and
trademark counterfeiting;
(ii) the number of cases involving copyright piracy and trademark counterfeiting
that were prosecuted in Chinese Taipei;IP/C/W/379
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(iii) the number of criminal convictions for copyright piracy and trademark
counterfeiting that have been obtained this year;
(iv) the level of criminal fines assessed this year;
(v) the number and length of jails terms imposed this year;  and
(vi) the final disposition of seized goods, materials, and implements in criminal
prosecutions.
22. The Untied States would appreciate knowing the number of criminal prosecutions and
convictions by your government  referred to in the previous sub-paragraph under other laws, including
the Optical Media Management Statute (2001).  In particular, please provide statistics on at least the
following issues:
(i) the number of investigations initiated under the Optical Media Management
Statute;
(ii) the number of cases initiated under the Optical Media Management Statute;
(iii) the number of criminal convictions obtained this year under the Optical
Media Management Statute;
(iv) the level of criminal fines assessed this year under the Optical Media
Management Statute;
(v) the number and length of jails terms imposed this year under the Optical
Media Management Statute;  and
(vi) the final disposition of seized goods, materials, and implements in criminal
prosecutions under the Optical Media Management Statute.
23. We would appreciate being advised of all efforts to coordinate administrative, civil and
criminal enforcement, including new regulations or initiatives undertaken to:
(i) preserve evidence from civil and administrative investigations for use in
criminal investigations and prosecutions;
(ii) ensure that appropriate copyright and trademark matters are referred to
criminal investigation;
(iii) provide for coordination or cooperation among various enforcement
authorities on complex investigations.
24. According to the Checklist of Issues on Enfo rcement (response to question 25), the owner of
the exclusive right to a trademark may request destruction of relevant writings and documents relating
to the trademark.  Please explain how Chinese Taipei's trademark law complies in practice with the
requirement that materials and implements used in making an infringing good be destroyed, per
TRIPS Article 46.  Please also explain how your  copyright law complies with this requirement.
25. Please explain whether judicial authorities have the authority to sanction a party to a
proceeding who has not produced evidence that lies within its control, and if so, what are these
sanctions?IP/C/W/379
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26. According to the Checklist on Enforcement re garding remedies for intellectual property
infringement, how is "retail price" of the seized commodity defined in the trademark law, i.e., does
the retail price of a seized commodity refer to the price of the genuine or non-genuine article?
27. According to the Checklist on Enforcement (r esponse to question No. 5), court decisions of
intellectual property cases are published in a newspaper at the request of the infringed right holder.  Ingeneral, are all intellectual property enforcement related decisions published?  If there is publication,
where is the decision published, and is the published decision readily available to the public?
28. It appears from draft laws available, and the Checklist on Enforcement, that fines in the
criminal provisions for intellectual property infringements go up only to NT$600,000.  Please explain
how these low fines provide deterrence by lowering infringement levels, in accordance with TRIPS
Article 61.
29. Please explain if there is a forfeiture remedy in your copyright and trademark law with respect
to infringing goods and any materials and implements used to make the infringing goods in
accordance with TRIPS Article 61.  If the copyright or trademark laws do not provide for such
remedies, please describe how other laws provide for this remedy.
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