WORLD TRADE
ORGANIZATIONIP/C/W/362
12 July 2002
(02-3887)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Questions posed by Japan
By means of a communication from the Permanent Mission of Japan, dated 9 July 2002, the
Secretariat has received copies of the following questions that Japan has communicated to China and
the Separate Customs Territory of Taiwan, Penghu, Kinmen and Matsu.
_______________
CHINA
A. COPYRIGHT
1. Please explain exceptions or exemptions of the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbouring Rights Law of your country, if any, aspermitted in Articles 3 and 4 of the TRIPS Agreement.
2. Please indicate whether the forms of works under Article 3, (1) to (9) of the Copyright Law
would be a non-exclusive list.  Please explain (i) the relevant laws or administrative regulations and
(ii) specific form(s) of works about "other works as provided for in laws and administrative
regulations" under Article 3 (9) of the Copyright Law.
3. Please explain exhaustively (i) the relevant law(s)  and (ii) specific form(s) of works stipulated
in the first sentence of Article 4 of the Copyright Law, which provides "Works the publication ordistribution of which is prohibited by the law shall not be protected by this Law".
4. Please provide the relevant regulation(s) and/or provisions for the protection of "expressions
of folklore" for implementing Article 6 of the Copyright Law.
5. Please explain whether the right of distribution, stipulated in the Article 10.1 (6) of the
Copyright Law, would be exercised to the copy or  reproductions of a work which have been put in
circulation in foreign country.
6. Please indicate the detail of "other rights which shall be enjoyed by copyright owners"
stipulated in the Article 10.1 (17) of the Copyright Law.
7. Please provide the relevant separate regulation(s) and/or provisions for the protection of "the
right of communication through information network"  for implementing Article 58 of the Copyright
Law.
8. Please explain whether any kind of different procedures for between domestic cases and cases
involving foreign companies would apply in the case of public copyright infringement.IP/C/W/362
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B. TRADEMARKS
9. According to Article 19 of the TRIPS Agreement, a trademark registration may be cancelled
"after an uninterrupted period of at least three years of non-use...."  At the same time, however, this
article stipulates that "unless valid reasons based on the existence of obstacles to such use are shown
by the trademark owner" and thus it provides a safeguard.
Article 44(4) of the Trademark Law of your country, however, stipulates that a trademark is
to be cancelled after an uninterrupted period of three years of non-use and no provision of safeguard is
contained in this Article.  Please explain how the safeguard in the TRIPS Agreement can be secured
under the Trademark Law.
10. Please explain whether Article 18 of the Trademark Law is consistent with National
Treatment in Article 3.1 of the TRIPS Agreement.
11. Regarding the provisions on "well-known trademar k" in Article 13 and 14 of the Trademark
Law, please explain, if any, complementary criteria  for the judgment of those provisions.  Does your
country have a plan to make a list of well-known trademark owned by foreign companies?  (The
current list includes only Chinese companies' trademarks.)  And we would like to confirm whether the
requirements stipulated in Article 14 of the Trademark Law are limited only to the situation in yourcountry or are applied to the situation in the countries other than China, too.
12. Article 6 of the Trademark Law can be interpreted that the trademark to be used on the goods
predetermined by the law should be surely applied for the trademark registration and that such
trademark may not be used on such goods prior to its registration.  Does this Article have the problem
in relation to the Article 20 of TRIPS Agreement which stipulates that the commercial use oftrademark should not be unjustifiably encumbered by special requirements?
C. G
EOGRAPHICAL INDICATIONS
13. Please explain how legislation of your country implements Article 22.2 of TRIPS Agreement,
regarding the Geographical Indications.
14. Please explain how legislation of your country implements Article 23.1 of TRIPS Agreement,
regarding the Geographical Indications.  In particular, please provide the specific products other than
wine and spirits, if any, which are subject of similar protection as provided under the Article 23.1.
D. PATENT
15. Under Article 19 of the Chinese Patent Law, foreign applicants are required to carry out
procedures to obtain a patent right in the People's Republic of China through a patent attorney
designated by the Chinese government.  Please explain how this condition can be considered as being
consistent with Article 3.1 of the TRIPS Agreement on National Treatment.
16. Article 62.2 of the TRIPS Agreement stipulates that "Members shall ensure that the
procedures for grant or registration" "permit the granting or registration of the right within a
reasonable period of time…."  How long does the procedure for grant or registration usually take in
your country?  Please discuss if the period of time is considered as a reasonable period of time.  As
regards legal actions, Article 41.2 of the TRIPS Agreement stipulates that "Procedures concerning theenforcement of intellectual property rights" "shall not" "entail……unwarranted delays."  The Civil
Code of the People's Republic of China provides for certain time limits for lawsuit procedures.  Please
explain if such time limits are also applicable where interested parties are foreign nationals.IP/C/W/362
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17. Article 57.1 of the Chinese Patent Law obliges that , where a conflict arises over a patent right,
interested parties should discuss the matter with each other before seeking a remedy at the court or the
governmental agency concerned.  On the other ha nd, Article 41.2 of the TRIPS Agreement stipulates
that "Procedures concerning the enforcement of intellectual property rights" "shall not be
unnecessarily complicated" "or entail…unwarranted delays."  Please give us an explanation about theconsistency between the said obligation in the Chinese Patent Law and the above provision of TRIPS
Agreement.
18. The Chinese Trademark Law and the Copyright Law stipulates provisions on procedures to
preserve relevant evidences in the case of an infringement.  Please explain how such procedures are
ensured under the Patent Law in your country.
19. Please explain "new" (Article 27.1 of the TRIPS Agreement) in the Chinese Patent Law.
20. Article 5 of your Patent Law prescribes that no patent right shall be granted for any invention-
creation that is contrary to the laws of the State.  Please explain what kind of law comes under such
"laws of the State" concretely.  (Article 4.4 of Paris Convention ,which shall be applied mutatis
mutandis  by Article 2.1 of TRIPS Agreement, prescribes that a patent is neither rejected nor
invalidated by reason that the sale etc. of goods which is the subject of patent are restricted by the
domestic laws and regulations.)
21. Article 10 of Chinese Patent Law prescribes that "any assignment, by a Chinese entity or
individual, of the right to apply for a patent, or of the patent right, to a foreigner must be approved by
the competent department concerned of the State Council."  Please explain whether applying this
Article to the case foreigner is concerned doesn't conflict with the principle of the National Treatment
in Article 3 of TRIPS Agreement.
E. U
NDISCLOSED INFORMATION
22. Please explain how legislation of your countr y implements Article 39.1 and 39.2 of the
TRIPS Agreement.  In particular, please indicate (i) titles of law and/or legislation and (ii) their
provisions for the protection of undisclosed information under Article 39.2.
23. Please indicate the relevant legislation and/or provisions for implementing Article 39.3 of the
TRIPS Agreement, regarding the test or other da ta submitted to the government for approving the
marketing of pharmaceutical or of agricultural chemical products.
F. ENFORCEMENT
24. Regarding disposal of counterfeit trademark goods in Articles 46 and 49 of the TRIPS
Agreement, please cite the relevant provisions of your country's law and explain the operations.
25. Regarding Article 61 of the TRIPS Agreement, please explain the elements of criminal
penalties on acts of infringement of intellectual property rights.  Please explain whether penalties areconsistent with Article 61 of the TRIPS Agreement, which requires remedies available shall include
imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of
penalties applied for crimes of a corresponding gravity.
26. Please cite administrative organizations related enforcement and explain the function of each
organization.  (Please discuss if such system is ‘unnecessarily complicated' in Article 41.2 of theTRIPS Agreement.)IP/C/W/362
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27. Please explain how legislation and relevant provisions of your country implements border
measures in Articles 51 to 60 of the TRIPS Agreement.
28. (i) Against the act of intellectual property infringement, Article 41.1 of the TRIPS
Agreement provides for effective remedies including those "constitute a deterrent to further
infringements."  Also, Article 61 of the same Agreement stipulates that "Remedies available shallinclude imprisonment and/or monetary fines sufficient to provide a deterrent,…….".  The amounts of
monetary fines and compensation for the damage caused by the infringement set up in Articles 58 and
60 of the Chinese Patent Law, Article 56 of the Chinese Trademark Law, and Article 48 of the
Chinese Copyright Law of your country  cannot be considered as very high.  Can these amounts serve
as an effective remedy to deter further infringements?
(ii) Please explain the criteria and the way of calculation to decide the amount of the
damages which judicial authorities order to the infringer to pay the right holder, regarding Article 45of the TRIPS Agreement.  And please explain the reason why relevant provisions of patent
law(Article 60), of copyright law(Article 48) and trademark law (Article 56) are different.
29. In accordance with Article 41.1 of TRIPS Agreement, Members shall ensure that enforcement
procedures as specified in this Part are available under their law so as to permit "effective action"
against any act of infringement of intellectual property right.  But we heard there are a lot of peoplewho recommit offences which infringe intellectual property rights.  Please give us an explanation
about what measures are incorporated in your countries' law to tackle these situations.
30. (i) Localism can be listed as one of the factors that impede quick and accurate
intellectual property right enforcement in your count ry.  In other words, it seems that some local
governmental agencies have a recognition that production of counterfeit goods and other intellectualproperty right infringement acts would help develop local economy.  As a result, this attitude of the
agencies has lead to the current flood of counterfeit goods.  Please explain whether the activities of
local enforcement administrative and judicial authorities as above are consistent with Article 41.1 and
41.3 of TRIPS Agreement.
(ii) Where attitude towards infringements allows discriminatory treatment against
foreigners/foreign legal entities, such treatment can  also be considered as being inconsistent with
Article 3.1 of the TRIPS Agreement, which stipulates that "Each Member shall accord to the nationals
of other Members treatment no less favorable than that it accords to its own nationals with regard to
the protection of intellectual property,..."  Please explain consistency of current situation with
Article 3.1 of the TRIPS Agreement.
31. Regarding Articles 43, 46 etc. of TRIPS Agreement and Chapter 7 of your patent law, please
explain the following;
(1) Is there any right like the claim for the infringement goods destroyed?
(2) Production order to the party in law suit against alleged infringement on patent right
and what kind of measures are taken in case that undisclosed information is contained
in the document?
Questions 32 to 56  are same ones listed in the Enforcement Checklist.  Because answers to
the Enforcement Checklist are not available so far, Japan would like to ask the following questions.
32. Specify the courts which have jurisdiction over IPR infringement cases.IP/C/W/362
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33. Which persons have standing to assert IPRs?  How may they be represented?  Are there
requirements for mandatory personal appearances before the court by the right holder?
34. What authority do the judicial authorities have to order, at the request of an opposing party, a
party to a proceeding to produce evidence that lies within its control?
35. What means exist to identify and protect confidential information brought forward as
evidence?
36. Describe the remedies that may be ordered by the judicial authorities and criteria, legislative
or jurisprudential, for their use;
- injunctions;
- damages, including recovery of profits, and expenses, including attorney's fees;
- destruction or other disposal of infringing goods and materials/implements for their
production;
- any other remedies.
37. In what circumstances, if any, do judicial authorities have the authority to order the infringer
to inform the right holder of the identity of third persons involved in the production and distribution of
the goods of services found to be infringing and of their channels of distribution?
38. Describe provisions relating to the indemnification of defendants wrongfully enjoined.  To
what extent are public authorities and/or officials liable in such a situation and what "remedialmeasures" are applicable to them?
39. Describe provisions governing the length and cost of proceedings.  Provide any available data
on the actual duration of proceedings and their cost.
40. Reply to the above questions in relation to any administrative procedures on the merits and
remedies that may result from these procedures.
41. Describe the types of provisional measures that judicial authorities may order, and the legal
basis for such authority.
42. In what circumstances may such measures be ordered inaudita altera parte?
43. Describe the main procedures for the initiation, ordering and maintenance in force of
provisional measures, in particular relevant time-limits and safeguards to protect the legitimateinterests of the defendant.
44. Describe provisions governing the length and cost of proceedings.  Provide any available data
on the actual duration of proceedings and their cost.
45. Reply to the above questions in relation to any administrative provisional measures.
46. Indicate for which goods it is possible to apply for the suspension by the customs authorities
of the release into free circulation, in particular whether these procedures are available also in respect
of goods which involve infringements of intellectual property rights other than counterfeit trademarkor pirated copyright goods as defined in the TRIPS Agreement (footnote to Article 51).  Specify,IP/C/W/362
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together with relevant criteria, any imports excluded from the application of such procedures (such as
goods from another member of a customs union, goods in transit or de minimis imports).  Do the
procedures apply to imports of goods put on the market in another country by or with the consent of
the right holder and to goods destined for exportation?
47. Provide a description of the main elements of the procedures relating to the suspension of the
release of goods by customs authorities, in particular the competent authorities (Article 51), the
requirements for an application (Article 52) and various requirements related to the duration of
suspension (Article 55).  How have Articles 53 (security or equivalent assurance), 56 (indemnification
of the importer and of the owner of the goods) and 57 (right of inspection and information) been
implemented?
48. Describe provisions governing the length and cost of proceedings.  Provide any available data
on the actual duration of proceedings and their cost.  How long is the validity of decisions by thecompetent authorities for the suspension of the release of goods into free circulation?
49. Are competent authorities required to act upon their own initiative and, if so, in what
circumstances?  Are there any special provisions applicable to ex officio action?
50. Describe the remedies that the competent authorities have the authority to order and any
criteria regulating their use.
51. Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.
52. In respect of which infringements of which intellectual property rights are criminal
procedures and penalties available?
53. Which public authorities are responsible for initiating criminal proceedings?  Are they
required to do this on their own initiative and/or in response to complaints?
54. Do private persons have standing to initiate criminal proceedings and, if so, who?
55. Specify, by category of IPR and type of infringe ment where necessary, the penalties and other
remedies that may be imposed:
- imprisonment;
- monetary fines;
- seizure, forfeiture and destruction of infringing goods and materials and implements
for their production;
- other.
56. Describe provisions governing the length and any cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost, if any.
G. P
ROTECTION OF NEW VARIETIES OF PLANTS
57. Article 9 of Regulations of your country on Pr otection of New Varieties of Plants stipulated
that "If a Chinese unit or individual is to assign to a foreigner the application right or the variety rightswith respect to a new variety of plant bred by it or him in China, it shall be approved by the
examining and approving organs." Please explain whether applying this Article to the case foreignerIP/C/W/362
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is concerned doesn't conflict with the principle of the National Treatment in Article 3 of the TRIPS
Agreement.
H. OTHERS
58. (i) Relaxation of licensing regulations:  Please explain whether Articles 24.3, 25, 28 and
29 of Technology Import/Export Control Regulations of your country are consistent with Article 3 ofTRIPS Agreement.
(ii) Where a licensee used a technology licensed by a licensor based on a technology
import contract between the two parties and where a legitimate interest of a third party was infringed
as a result of use of that technology by the licensee, the licensor is to be held responsible under
Technology Import/Export Control Regulations.  Thus, these licensors are required to go under a
condition much stricter than that set up in Article 353 of the Contract Law.  This can be considered as
being inconsistent with Article 3.1 of the TRIPS Agreement, which stipulates provisions concerning
National Treatment provided that such Regulations so lely apply to the licensors who are foreigners or
foreign entities.  Please give us an explanation regarding this matter.
59. Generally, the burden of proof of infringement rests with the right holder.  In the most cases
of infringements of intellectual property, however, it is often more difficult to prove that an act ofinfringement took place as compared with other tort claims.  Under Article 64 of Code of Civil
Procedures of your country, a right holder is required to submit evidence for a claim he/she made and
there are no provisions to reduce the burden of proof on right holders.  Thus, this might place an
inordinate burden on right holders if they are required to prove that an act of intellectual property right
infringement occurred.  Article 41 of the TRIPS Agreement stipulates that "Procedures concerning theenforcement of intellectual property rights" "shall not be unnecessarily complicated or costly…" Such
possible inordinate burden as mentioned above can be considered as falling under the conditions
mentioned in this Article.  Please give us an ex planation about what measures your country has taken
to secure consistency with Article 41 of the TRIPS Agreement.
THE SEPARATE CUSTOMS TERRITORY OF TAIWAN, PENGHU, KINMEN AND MATSU
A. C
OPYRIGHT
1. Please explain exceptions or exemptions of the National Treatment and Most-Favoured-Nation
Treatment under the Copyright and Neighbouring Rights Law, if any, as permitted in Articles 3 and 4
of the TRIPS Agreement.
2. Please indicate whether a compulsory license would be granted to a person who does not
make any efforts to obtain authorization from the right holder prior to use of a musical work, if six
months have passed since the selling of such musical work, under Article 69 of the Copyright Act.
Please explain whether such procedures are consistent with Article 13 of the TRIPS Agreement,
which provides limitations or exceptions to exclusive rights to certain special cases which do not
conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimateinterests of the right holder.
3. Article 89 bis of the Copyright Act provides two years limitation of the right to request
compensation for infringement, that is, the right to request compensation for infringement shall be
extinguished if not exercised within two years from the time the person having the right to make the
request knows of the loss and the identify of the obligor.  Please explain whether such limitation isIP/C/W/362
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consistent with Article 41.2 of the TRIPS Agreem ent, which provides procedures concerning the
enforcement of intellectual property rights shall not entail unreasonable time-limits.
4. Please explain the specific case or modality about "a person has made significant investment
for the exploitation of works" under Article 106 ter of the Copyright Act.  In particular, please provide
the criteria to decide whether a person has made significant investment for the exploitation of works.
5. In accordance with Article 106 ter of the Copyright law, the reproduction and adaptation
occurred prior to the effective date on which the WTO Agreement takes effect in Chinese Taipei can
be used (not subject to the right excising) for two more years after the aforementioned effective date.
Please explain the reason of two years and the relation with TRIPS agreement.  In addition, please
explain what the "plate" of Article 79 of your c opyright law is, and please explain if interim measures
of two years is applied to the "plate".
6. Regarding the protection of database relating to Article10.2 of TRIPS Agreement, please cite
the relevant provisions of your copyright law.
B. TRADEMARKS
7. Regarding "well-known trademarks", please  explain how legislation including your
Trademark Law and your Fair Trade Law impl ements Articles 16.2 and 16.3 of the TRIPS
Agreement.
C. GEOGRAPHICAL INDICATIONS
8. Please explain how legislation of Chinese Taipei implements Articles 22.2 and 23.1 of TRIPS
agreement, regarding the Geographical Indications.
D. PATENT
9. Priority claim under the Patent Cooperation Treaty: Most-Favored-Nation Treatment:
Chinese Taipei is not a member of the Patent Cooperation Treaty (PCT).  Therefore in Chinese
Taipei, as we understand, applicants are not basi cally allowed to claim a priority based on a PCT
international application.  Before joining the Wo rld Trade Organization (WTO), Chinese Taipei had
been adopting the examination guidelines under whic h only those applicants who firstly file a PCT
application with Australia had been allowed to claim such a priority.  With the accession to the WTO,however, examination guidelines of Chinese Taipei are supposed to have been revised in accordance
with Article 4 of the TRIPS Agreement providing the Most-Favored-Nation Treatment.  Has Chinese
Taipei made the necessary amendments to the examin ation guidelines in accordance with Article 4 of
the TRIPS Agreement?
10. The provision of the Article 27.3(b) of TRIPS Agreement provides that "Members shall
provide for the protection of plant varieties either by patents or by an effective sui generis  system or
by any combination thereof", please explain how legislation of Chinese Taipei, including plant seed
law, provide for such kind of the plant.
11. "Offering for sale" relating to the effect of a patent:  Article 28 of the TRIPS Agreement
provides that a patent shall confer on its owner the exclusive right, where the subject matter of the
patent is a product, to prevent third parties from "offering for sale" that product, and where the subjectmatter of the patent is a process, from "offering for sale" at least the product obtained directly by that
process.  Under the current Patent law, however, a patent does not confer on its owner such exclusive
rights regarding "offering for sale."  It seems to us that the level of patent protection under the PatentIP/C/W/362
Page 9
law is lower than that is to be conferred under the TRIPS Agreement.  Please give us an explanation
about this and how legislation provide for the "offering for sale" relating to the effect of a patent.
12. Please explain how examination is conducted in order to study to grant the license base "on its
individual merits" in the Article 31(a) of TRIPS Agreement concerning compulsory licenses.
E. UNCLOSED INFORMATION
13. Please provide the relevant legislation and/or provisions for implementing Article 39.3 of
TRIPS agreement.
F. ENFORCEMENT
14. Please explain the relation of the jurisdiction based on Article 1 and Article 15 of the Code of
Civil Procedure.  In particular, can the plaintiff bring an action to the court where the defendant
domiciles and/or the court where a tortuous acts is committed provided that the requirements
prescribed in Articles 1 and/or 15 are fulfilled respectively?
15. Please provide the reason or criteria in which the court orders the party to be present, although
the party is not required to appear in person before the court where a legal representative is present,
under Article 203-I of the Code of Civil Procedure.  In particular, please explain whether such order
would make some kind of difficulties to the foreign party in order to proceed the action in Chinese
Taipei.
16. Please explain the scope and exception of written evidence, which lies within a party's control
and may be ordered to submit by the court in accordance with Article 342, 343 and 345 of the Code of
Civil Procedure.  In particular, please indicate whether the trade secret contained in the document
would justify rejecting the order by the court.
17. (i) Please provide the remedies which the judicial authorities order regarding each
intellectual property rights provided in the TRIPS Agreement, including injunctions, damages,
expenses, destruction or disposal of infringing goods, materials or implements for their production.
Please explain the criteria and the way of calculation to decide the amount of the damages which
judicial authorities order to the infringer to pay to the right holder.
(ii) In accordance with Article 41.1 of TRIPS Agreement, Members shall ensure that
enforcement procedures as specified in Part III of TRIPS Agreement are available under their laws so
as to permit "effective action" against any act of infringement of intellectual property rights.
However, with the revision of the Chinese Taipei's Patent Law in 2001, all the criminal penalty
provisions against invention patents infringements were deleted.  In addition to invention patents,
other patents will be deleted from the Patent Law.   Under these conditions, please explain in detail
how "effective action" against infringement will be implemented.
(iii) Generally, the burden of proof of infringement rests with the right holder.  In the
cases of infringements of intellectual property, however, it is often more difficult to prove that an act
of infringement took place as compared with other tort claims.  Nevertheless, at the time of the
revision, any provisions to reduce the burden of proof on right holders were not incorporated.  Thus,
this might place an inordinate burden on right holders if they are required to prove that an act ofintellectual property right infringement occurred.  Article 41 of the TRIPS Agreement stipulates that
"Procedures concerning the enforcement of intellectual property rights" "shall not be unnecessarily
complicated or costly…" Such possible inordinate burden as mentioned above can be considered as
falling under the conditions mentioned in this Article.  Please give us an explanation about what
measures Chinese Taipei has taken to secure consistency with Article 41 of the TRIPS Agreement.IP/C/W/362
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18. Please indicate titles of laws and regulations and their provisions in which the suspension of
the release of counterfeit trademark or pirated copyright goods is prescribed, as stipulated in
Article 51 of the TRIPS Agreement.
19. Please explain the kind and amounts of criminal penalties including imprisonment and
monetary fines regarding intellectual property rights, citing the relevant provisions of Chinese Taipei's
law.  In particular, are the crimes prosecuted only when the injured party has made a formal
complaint?  If so, please provide the period of complaint and the requirements.  Please explain
whether penalties are consistent with Article 61 of the TRIPS Agreement, which requires remedies
available shall include imprisonment and/or monetary fines sufficient to provide a deterrent,
consistently with the level of penalties applied for crimes of a corresponding gravity.
20. Regarding the border measures, please give us information as to the practice of operation and
relevant data of "The Trademark Export Monitoring System ".
G. TABACCO AND ALCOHOL ADMINISTRATION LAW
21. Please discuss consistency of provision and/or practice of restrictions under the Law
Governing the Prevention of Tobacco Hazards, which is referred in Article 32 of the Tobacco and
Alcohol Administration Law, with the TRIPS Agreement, especially in terms of protection oftrademark and so forth.
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