September 1: TIPO introduces operational directions for third parties to participate in patent examination processTIPO has always strived for the highest standards when it comes to patent quality. As a further sign of this commitment, the office has been working on how to best encourage third parties to submit prior art concerning the patentability of an invention after the publishing of patent applications 18 months following the earliest effective filing date - this reflects similar measures adopted worldwide and serves to enhance the stability of patent rights.With the aforementioned goal in mind, TIPO has introduced the Operational Directions for the Processing of Third-Party Observations on Invention Patent Applications. It is hoped that the new directions, which were announced on August 25, 2020, and came into effect on September 1 of the same year, will clearly regulate public participation procedures. TIPO will also provide convenient access to third-party observation application forms via Taiwan’s Patent Search System.As for patent citation information, this will henceforth be relayed to patent applicants by notification, while patent citations themselves will be made available to the public on the Patent Search System. These measures are designed to ensure that valuable public input by means of third-party observations becomes the driving force for the improvement of patent quality.The operational directions will present a host of advantages for patent applicants, industries and TIPO.1. Advantages for applicants: In the past, roughly 100 third-party patent observations were filed with TIPO every year. However, up to 90% of third parties requested that citation information not be published, leaving many patent applicants in the dark and unable to make necessary revisions to their claims before patent approval. This could result in time-consuming, costly post-grant litigation proceedings. Thanks to the new directions, patent applicants will now be informed about the filing of third-party observations in a timely manner. This will not only safeguard the rights and interests of patent applicants, but also enhance their patent’s stability and benefit their patent portfolio both at home and abroad.2. Advantages for industries: Convenient access to third-party observation application forms and document templates provided by TIPO will make it easier for interested parties to file observations and prior art for examination purposes. Rules regarding the time frame for submissions have also been relaxed. Where an applicant files for both an invention and a utility model patent for the same invention, interested parties will no longer have to wait 18 months until publication of the invention patent application to submit observations or prior art, but may already do so after completion of the formal examination of the utility model, which tends to only take a little over two months.3. Advantages for TIPO: By providing convenient access to third-party observation application forms and document templates via Taiwan’s Patent Search System, TIPO is able to encourage third parties to more readily submit citation information, which in turn helps examiners gain an overview of evidence relating to prior art while also mitigating the risk of administrative costs being incurred due to subsequent invalidation proceedings.In essence, the new directions will facilitate alignment with international practices and more effectively encourage public/third-party participation in the process of patent examination. They should also help in reducing the economic burden on patentees wishing to maintain the validity of their patent. We are confident that these positive changes will further improve patent examination quality in Taiwan.Operational Directions for the Processing of Third-Party Observations on Invention Patent ApplicationsOperational Directions for the Processing of Third-Party Observations on Invention Patent Applications – easy-to-follow infographic
Amendments to the Regulations Governing Application for Approval of Compulsory License of Musical Works and Royalties for Use ThereofWhere an application is made for a compulsory license of a musical work, the written application form shall indicate the identity of the owner of the economic rights to the musical work. This allows the copyright competent authority to notify said owner that he/she may submit an opinion pertaining to the content of the application form. However, in accordance with Paragraph 4 of Article 37 of the Copyright Act, if the musical work has been exclusively licensed, the exclusive licensee may, within the scope of the license, exercise rights in the capacity of economic rights holder. In such instances, the copyright owner is precluded from exercising his/her rights.To ensure conformance with the provisions set forth in the Copyright Act as well as relevant court decisions, partial revisions have been made to the Regulations Governing Application for Approval of Compulsory License of Musical Works and Royalties for Use Thereof. The Ministry of Economic Affairs announced the amendments on August 4. Points of note are as follows:To facilitate the copyright competent authority’s handling of procedural matters, such as notification of right holders, the identity of any exclusive licensee to the musical work concerned shall henceforth also be indicated as an item on the application form. (Amendment to Article 3)Where a musical work has been exclusively licensed, the copyright competent authority shall notify the exclusive licensee about his/her right to submit an opinion as well as the scope thereof. (Amendment to Article 7)The wording of certain provisions has been fine-tuned so as to strengthen procedural guarantees afforded to exclusive licensees. (Amendments to Articles 9–11 and Articles 16–18)Regulations Governing Application for Approval of Compulsory License of Musical Works and Royalties for Use Thereof
Operational Directions for the Processing of Third-Party Observations on Patent Applications come into force on September 1On August 25, the Ministry of Economic Affairs released the Operational Directions for the Processing of Third-Party Observations on Patent Applications. These are designed to implement the provisions of Article 39 of the Enforcement Rules of the Patent Act and improve the system for third-party observations as a tool for public participation in the patent examination process. The new directions lay out the details for submission of a third-party observation. These include the relevant time period, situations for making a submission, and the documents required to be filled out and those that should be supplemented as well as the manner of submission. The directions also outline the processing principles employed by TIPO in relation to third-party observations.Operational Directions for the Processing of Third-Party Observations on Patent Applications (in Mandarin)General overview and point-by-point explanation of the guidelines (in Mandarin)
2020 Taiwan Innotech Expo open to allThe 2020 Taiwan Innotech Expo will take place from September 24 to 26 in Hall 1 of the Taipei World Trade Center. With approximately 900 exhibit booths, the event is set to feature a thousand different technological innovations and newly patented inventions. Continuing to enjoy the distinction as Taiwan’s most iconic R&D platform, the expo will also be the first major international exhibition to be held since the outbreak of COVID-19. All members of society are invited to take part.This year, the layout of the exhibition area will revolve around the so-called Three Major Themed Pavilions as well as an Invention Competition Area, where inventors, entrepreneurs and researchers from around the globe will be presenting over 500 innovative creations. By holding the competition, TIPO hopes to uncover the world’s most original and promising inventions, which will all be in the running for the ultimate prize – the prestigious Platinum Medal. TIPO will also be setting up a special area for outstanding innovation by Taiwanese inventors, where the winners and runners-up from international fairs held within the past three years, together with the reigning Platinum Medal recipient, will be showcasing their work – a true testament to the boundless creativity to be found across Taiwan.The expo’s Three Major Themed Pavilions will be jointly curated by the following ten ministries and bodies: Ministry of Economic Affairs, Ministry of Science and Technology, Ministry of Education, Ministry of National Defense, Ministry of Health and Welfare, Ministry of Labor, Council of Agriculture, National Development Council, Environmental Protection Administration and Academia Sinica. The focus will be on pioneering inventions, sustainable development and technologies of the future. Bringing together the trailblazing technologies developed with the help of the above institutions, the exhibition unveils Taiwan’s latest achievements in scientific research.Taking place alongside the expo is an innovation technology forum, which will focus on IP business strategies and emerging tech. Participants will be sharing their experience and insights in an effort to help industries harness the value of scientific innovation. A total of 14 conferences and seminars aim to encourage partnerships and exchanges on tech-related issues with a view to creating domestic and international business opportunities vis-à-vis patented technologies. For all the latest news on the expo, please visit the 2020 Taiwan Innotech Expo website.2020 Taiwan Innotech Expo
Program on Mutual Cooperation in the Field of Deposit of Biological Materials for the Purposes of Patent Procedure between Taiwan and South Korea comes into effect on September 1, 2020Following the launch of the cooperative program on mutual recognition of the deposit of biological materials for the purpose of patent procedure between Taiwan and Japan in 2015 and between Taiwan and the UK in 2017, the cooperative program between Taiwan and South Korea, based on an MOU signed in August, will be implemented on September 1, 2020. It once again expands Taiwan’s scope of international cooperation in this field.Upon implementation of this program, TIPO will recognize the deposit at KIPO’s designated depositary and KIPO will recognize the deposit at TIPO’s designated depositary. Therefore, any Taiwanese applicant filing patent applications relating to biological materials with KIPO or any South Korean applicant filing patent applications relating to biological materials with TIPO is able to deposit his/her biological materials in a local designated depositary. This streamlines the deposit procedures for patent applicants in both countries, avoids problems due to the instability of biological materials that may be caused by cross-border deposits, and also reduces the cost of repeated deposits.At present, the depositary designated by TIPO is the Food Industry Research and Development Institute (FIRDI), while those designated by KIPO are the Korean Collection for Type Cultures (KCTC), the Korean Culture Center of Microorganisms (KCCM), the Korean Cell Line Research Foundation (KCLRF) and the Korean Agricultural Culture Collection (KACC).Moreover, both offices also recognize deposits of biological materials in a depositary designated by the other office made before the implementation of this cooperative program, provided two conditions are met. Patent applicants will not be required to make repeated deposits in either Taiwan or South Korea if: 1) their patent application is filed on or after September 1, 2020, i.e., the implementation date of this cooperative program; and 2) their patent application is filed along with copies of the deposit certificates submitted before the corresponding deadlines.The Operational Directions Governing the Mutual Cooperation between TIPO and KIPO in the Field of Deposit of Biological Materials for the Purposes of Patent Procedure and related Q&A information can be found on TIPO’s website.Operational Directions (in Mandarin)Q&A (in Mandarin)
TIPO Holds a Public Hearing on the Amendment to the Substantive Examination Guidelines for Design Patents on July 23After having reviewed design patent examination practices in recent years, TIPO has drafted the amendment to parts of Chapter III on Substantive Examination Guidelines for Design Patents of the Examination Guidelines for Patents so as to stay current with the latest developments in digital and new technologies. A public hearing will therefore be held on July 23.The key revisions pertaining to relaxing the requirements for disclosing descriptions and graphs, as well as those governing divisional application; adding constructions and interior designs to the examples of subject matter for patent protection, and adding computer program products to the example of articles a graph design may be applied to.More information (in Mandarin)
Registration for Information Sessions on Patent Search and Its Application in Building Patent Portfolios Commences on July 23To improve domestic businesses’ abilities to build patent portfolios, TIPO is going to host the Information Sessions on Industrial Patent Portfolios on Patent Search. These events will illustrate how to use TIPO’s GPSS to search patent worldwide, and how to use fishbone diagram and technology life cycle for the analysis of patent trend. In addition, the strategies and useful steps to build patent portfolios will be systematically introduced along with practical cases.These information sessions are advanced courses for patent search and relevant applications, thus participants are advised to have relevant experiences in patent search. The events will be held on in Kaohsiung, Taichung, Hsinchu, and Taipei from August 4 onwards.More information about registration (in Mandarin)
Registration for the 2020 Seminar on Appropriate Confidentiality Measures for Businesses Now OpenTo assist businesses in establishing comprehensive protective mechanisms for trade secrets, TIPO and the Taiwan Association for Trade Secrets Protection (TTSP) will co-host the seminars on Appropriate Confidentiality Measures for Businesses in Taipei, Taichung, and Tainan on August 14, 28 and September 11.Experts experienced in relevant practices and a prosecutor will be invited to share their thoughts on appropriate confidentiality measures, an overview of applying information technology to trade secret security; and practices in trade secret investigations and the latest development.TIPO hopes these events would enable businesses to establish sound trade secret management system and strategies for coping infringement.More information about registrationAgenda (in Mandarin)
Registration for Information Sessions on Copyright in Cultural and Creative Industries and Internet Copyright Now OpenFrom July to October, TIPO will be hosting a series of six information sessions targeting cultural and creative industries and Internet copyright to address topics of must-know copyright for audio-visual and music industries; must-know copyright for digital publishing industries; and must-know copyright on image usages for online sellers, YouTubers and Internet celebrities. The events will invite legal experts and lecturers from private sectors to give explanation of these topics so as to help cultural and creative industries as well as users increase their knowledge of Copyright Act.More information about registration
TIPO Releases IPR Statistics for the First Half of 2020In the first half of 2020, TIPO received a total of 33,954 applications for invention, utility model, and design patents, marking a 4% decrease over the same period last year. On the other hand, the number of trademark registration applications hit a record high with 43,385 cases (see Table 1). In terms of invention patent applications, TSMC topped domestic applicants and QUALCOMM topped foreign applicants (see Figure 2). The applications by domestic SMEs grew by 14%. PatentDomestic enterprises registered a 1% growth for the number of invention patent applications filed, and their share accounted for over 75% of total domestic invention patent applications, a main driving force for innovation in Taiwan. Of these, SMEs’ applications were up by 14%, marking over 10% growth for the second consecutive year.As for applicants, TSMC topped the list with 375 cases, and MEDIATEK (211 cases) and AU OPTRONICS (210 cases) stood at the second and third spot respectively (see Figure 2). TSMC outnumbered the others for the fourth year in a row.Invention patent applications filed by domestic colleges and research institutions increased by 19% and 2% respectively.Regarding the nationality of non-resident applicants, Japan came in first with 6,105 invention patent applications filed (see Figure 1). Among the top filing foreign companies, QUALCOMM ranked first with 304 cases, representing a growth of 14% over the same period last year (see Figure 2). As for design patents, Japan also came out on top with 497 cases (see Figure 1), while FORD was the company with the most design patents filed (114 cases).TrademarkThe number of new applications for trademark registration (43,385 cases) saw a 3% increase from the same period last year. Applications by residents (32,843 cases) grew by 10%, whereas those by non-residents (10,542 cases) fell (see Table 1). Applications by residents reached a record high not seen since the year 2000.The share of applications by residents rose from 71% in the first half of 2019 to 76% in the first half of 2020, showing a higher concentration of domestic applications.A breakdown by Nice class shows that class 35 (advertising, business management, etc.) received the most cases (5,955) by residents. All top five classes saw positive growth, with class 5 (pharmaceuticals, etc.) registering the highest growth at 24% (see Figure 3). As to applicants, UNI-PRESIDENT led with 228 cases (see Table 3).Of non-residents’ trademark applications, mainland China stayed on top with 2,289 cases (see Figure 1). Class 9 (computer and technology products, etc.) received the most cases (2,100) by non-residents. The top five classes all saw a decrease during this period (see Figure 3). Among non-resident applicants, HUAWEI filed the most applications with 95 cases (see Table 4).
The provisions governing matters relating to patent applications are relaxed after promulgation of the amended Enforcement Rules of the Patent ActOn June 24, 2020, the Enforcement Rules of the Patent Act was amended to relax regulation, and broaden public participation in examinations to increase examination quality.The key revisions include an invention patent applicant who uses an electronic file format prescribed by TIPO to submit a listing of nucleotides and/or amino acids sequence may be exempted from submission in written form. Also, the restriction where a third party may submit observation to TIPO only after the publication of the invention patent application is now relaxed. Any person may submit observations prior to an examination decisions being rendered.Amended Articles 17 and 39 of the Enforcement Rules of the Patent Act
Alternative methods for electronic transmission of patent and trademark application documents take effect on July 1, 2020In order to remedy the situation concerning patent and trademark e-filings where transmission takes longer than usual due to file size or where failures occur in TIPO’s filing system that disrupts e-filing process, TIPO has amended the Regulations Governing the Implementation of Filing Patent Applications and Services by Electronic Means and the Regulations Governing the Implementation of Filing Trademark Applications and Services by Electronic Means, as well as published alternative methods for electronic transmission, which took effect on July 1. Below are the highlights of the methods.Where the file size of patent or trademark application documents exceeds 500MB, or where TIPO notifies a breakdown of its system, an user may store the files on a read-only DVD disc and submit it in person or mail it to TIPO to complete the e-filing process.For application filed through the alternative methods, the date of application and other proceedings shall be the date on which TIPO receives the electronic patent/trademark application documents. The date of those via postal service shall be the postmark date. Unless otherwise proved by the parties involved, the date of those whose postmark date appears to be ambiguous shall be based on the date of receipt by TIPO.The amended provisions of the Regulations Governing the Implementation of Filing Patent Applications and Services by Electronic Means and the Regulations Governing the Implementation of Filing Trademark Applications and Services by Electronic Means (in Mandarin)The publication of alternative methods for electronic transmission (in Mandarin)
Changes made to the name of designated goods and services for trademark registration, as well as cross index referencesIn order to align the goods and services classification more closely with the actual business scenarios, TIPO added/amended 468 items and deleted 14 items in names of designated goods and services for trademark registration. Also, it added/amended 16 names of groups/sub-groups or notes in total. The above changes took effect on July 1, 2020.The new version of “Names of designated goods and services for trademark registration” (in Mandarin)
Registration is now open for TIPO’s 2020 IPR affairs seminars which begin on July 27To enable the public to better understand TIPO’s routine IPR affairs and facilitate in-person communication with different sectors, TIPO will host the annual “IPR affairs seminars” on July 27 in Taipei, July 30 in Taichung, August 3 in Hsinchu, August 6 in Tainan, and August 7 in Kaohsiung.The seminars will address four specific topics: (1) An overview of the “Guidelines for processing third-party observations on patent applications” and “Proactive patent examination program for start-ups”; (2) Case studies on issue of ex officio examination, res judicata and new evidence; (3) An overview of the fast-track for trademark and applications; and (4) Reminders of taking patent and trademark related proceedings. There will also be a discussion session in the seminars. The events are open to registration now.Registration information (in Mandarin)
“Respect Creations: Parents and Children Having Fun Creating” is now open for registrationTIPO will host the “Respect Creations: Parents and Children Having Fun Creating” on August 2 (Sunday), 14:00-16:00, in the Taipei Zoo.This event allows parents and their children to cowork on potted plants DIY to show their creativity. There will also be stalls that combine games and competitions where visitors can acquire IPR knowledge while partaking in these fun activities. TIPO is looking forward to your participation.Registration information (in Mandarin)
TIPO releases the English edition of the annual reportIn 2019, TIPO celebrated its 20th anniversary of its establishment.In 2019, the Copyright Act was amended in May to impose civil and criminal liabilities on any person providing computer programs which have aggregated IP addresses that enable access to infringing contents. The purpose is to curb the circulation of illegal set-top boxes.In November, the Patent Act was amended to extend the term of protection for design patent from 12 to 15 years. In addition, the restriction on post-grant division of invention and utility model patents was relaxed, and an invalidation requester should submit grounds thereof within three months after the request is filed. The amendment is to facilitate development in Taiwan’s design industry and increase the efficiency in the examination of invalidation cases.In December, the Legislative Yuan passed the amendment to the Trade Secrets Act that introduces the system of confidentiality protective order for investigation in order to increase the efficiency in the investigation of trade secret cases.In addition, TIPO keeps improving examination efficiency and quality, providing strong support for the industry sector’s innovation development, as well as strengthening international cooperation. The annual report covers accomplishments and statistics for the year 2019. Access to the annual report is open to the public.English edition of TIPO’s 2019 annual report
Analysis of trademark applications and the trend in business development in the past decadeIn recent years, TIPO has been publishing patent application analysis reports of domestic and foreign businesses’ patent portfolios and the trend in their development. These reports have received great attention from various sectors.This year, with reference to the “World Intellectual Property Indicators 2019 (WIPI 2019)” published by WIPO IP Statistics Data Center, TIPO uses similar method to group Nice classes assigned to designated goods or services of trademark applications into ten industry sectors (see attached chart), and publishes the report “Analysis of the trend in trademark applications from 2010 to 2019 by industry sector.” It is the result of collecting and organizing more than 770,000 trademark applications over the ten-year span, and the complicated data is converted into easily-understood graphs and charts by employing data visualization and data-driven strategy.At the same time, the report compares the latest WIPI 2019 Report with the data of Taiwan’s residents’ applications to reveal the similarities and differences between Taiwan’s industry sectors and those of other countries. As such, the report serves as a reference for businesses to build portfolios, develop brands, and stay current with market trends.This report focuses on the trend in the development of different industry sectors. Main points are summarized as follows (see attached chart):I. Trademark applications in the “agriculture” sector over the past decade take the lead, accounting for 19.2%~21.6% of all applications. “Agriculture” corresponds to Classes 29~33 and 43 in the Nice Classification. Namely, they include food, beverages, catering, accommodation and other goods and services that are most relevant to the daily lives of general public. As near 70% of the trademark applications are filed by residents, among which Class 43 is the second highest sector, it shows residents’ passion for brand innovation and entrepreneurship in the catering business.II. “Business services” is the second largest industry sector in residents’ trademark applications over the past decade. It corresponds to Class 35 in the Nice Classification which covers commercial services such as wholesale and retail, advertising and marketing, and import/export agents, as well as financial services in Class 36. Class 35 also tops all of the sectors in residents’ applications and this is indicative of Taiwan’s burgeoning commercial activities such as the retail business, and ongoing intensive development of business services in recent years.On the third place is “health” industry sector, which corresponds to Class 3 and Class 5, namely cosmetics, cleansing products, as well as pharmaceuticals and medical products. This also reflects the fact that residents are placing great emphasis on physical wellbeing and beauty care, which in turn is driving relevant businesses to apply for trademark registration for their brands.III. Trademark applications by non-residents over the past decade are dominated by the “research and technology” sector. Applications filed in this sector take up 16.8%~19.3% of all types of applications with a modest increase in growth. “Research and technology” sector covers Classes 9, 38, 42, and 45, namely computers, communications, and consumer electronics equipment, communications transmission, scientific and technological R&D, as well as legal services.Over the past decade, Japan, the US, and mainland China have become the top three foreign applicants of trademark, whose applications take up more than half of all applications by non-residents. This shows not only the ongoing competition among these countries in technological R&D but also points to their proactive efforts to seek trademark protection for their patented technologies under the territoriality principle. Taiwan is the hub for the world’s high-tech industries such as electronics, information, and telecommunications. It is also an integral part of many countries’ global brand portfolios.IV. “Health” and “agriculture” are the second and third highest industry sectors of non-residents’ trademark applications in the past decade. The same sectors also occupy the third and the first places in residents’ applications. The high domestic demands for these products and services are driving foreign applicants to pivot their emphasis and invest in Taiwan.V. Trademark filing activity is a relatively less discussed benchmark. To compare trademark filing intensity across countries, WIPI measures resident application class counts in relation to GDP (per USD 100 billion GDP) and population level (per million population). The data may show both the size of the economies and the level of economic development of different countries, while it may also reflect how the costs of trademark application could have some adverse influence on demand for application.Take the 2018 data for instance, trademark applications filed domestically in China unsurprisingly skyrocketed, catapulting the country’s average application class count per USD 100 billion GDP and application class count per million population to the top spot.In comparison with the average class count per GDP, Taiwan is on par with that of South Korea. As to average class count per million population, Taiwan is growing steadily and equivalent to that of the Netherlands. Both Taiwan’s average class count per GDP and that of per million population are higher than the world’s average.VI. Below is a comparison between Taiwan’s statistics and those of other countries in the WIPI 2019 (data gleaned from year 2018) report.In 17th place globally, application class counts stood at around 109,000 classes.In 15th place globally, registration class counts stood at around 93,000 classes.In non-residents’ applications filed in Taiwan, the rations of goods and services to all are close to those of WIPO’s statistics (TIPO: goods 71.2%, services 28.8%; WIPO: goods 68.9%, services 31.1%).In non-residents’ applications filed in Taiwan, the top four industry sectors are, in descending order, “research and technology,” “health,” “agriculture,” and “clothing and accessories.” These are the same top four industry sectors in WIPI 2019 report, albeit in different order. This reflects that with the waves of globalization continuing to surge, countries around the world are developing businesses that are increasingly similar in kind. As with the trend that big businesses will always sustain their dominance, multinational corporations are investing heavily in developing their global marketing portfolios. Under such circumstances, SMEs more than ever must rely on their creative energies to facilitate any business breakthroughs.Over the past few months, the world’s economic and trading activities have suffered drastic changes due to the Covid-19 pandemic. In the meantime, the economic outlook is still brimming with uncertainties. Nevertheless, Taiwan has rarely experienced any deficiency in economic vitality and people enthusiastic about starting businesses.As restaurants, hotels, and tourism industries are regaining momentum in the domestic market during the post-Covid-19 time, we can expect a continuous growth in applications in the “agriculture” sector. In addition, the success fight with the pandemic is also the result of our ongoing efforts in the promotion of medical care and biotech industries. Large amount of investment, accompanied with solid foundation of upstream and downstream manufacturing businesses, has made Taiwan the key provider of medical supplies in regional or even global markets, which could therefore bring a huge opportunity for business development in the “health” sector.As well as continuing the effort in the name of “Taiwan’s national team,” relevant businesses are expected to be prepared in advance, be more flexible to their coping strategies, and speed up the pace of creating their own brands.
TIPO-KIPO Permanent PPH MOTTAINAI Program Comes Into Effect on July 1, 2020The Patent Prosecution Highway (PPH) pilot program between Taiwan and Korea will expire on June 30, 2020. In view of its impressive results in acceleration of examination, both sides have agreed that a permanent PPH program will replace the current one, starting July 1, 2020. The permanent program is aimed at continuing to provide applicants with stable and convenient PPH services.Taiwan and Korea have been close economic and trading partners. For long years, Korea has made the top four countries in invention patent applications filed in Taiwan. Last year (2019), TIPO received a total of 1,656 invention patent applications from Korean applicants. On the other hand, KIPO received 1,102 invention patent applications from Taiwanese applicants. To speed up examination so that applicants could acquire their patents quickly, TIPO and KIPO have conducted the PPH pilot program since July 1, 2015.The request forms and detailed information on the procedures of the permanent PPH MOTTAINAI are available at TIPO’s website and KIPO’s website.
Relief for the delay of statutory or specified time period of patent and trademark cases due to the Covid-19 pandemicTIPO announced the relief for the delay of statutory or specified time period due to the Covid-19 pandemic.Statutory time periodAccording to Article 17.2 of the Patent Act and Article 12 of the Enforcement Rules of the Patent Act, or Article 8.2 of the Trademark Act and Article 9 of the Enforcement Rules of the Trademark Act, an applicant filing a written request for reinstatement should state the delay of statutory time period is due to the Covid-19 pandemic and provide evidence thereof. While requesting for reinstatement, the applicant shall concurrently fulfil all obligations that should have been fulfilled within the concerned time period. In principle, such cases will be determined leniently on a case-by-case basis.If the applicant who has appointed an agent fails to comply with the statutory time period due to the inconvenience of getting in contact with each other caused by the Covid-19 pandemic, he or she may file a written request for reinstatement accompanied by evidence thereof. In principle, such cases will be determined leniently on a case-by-case basis.Specified time periodThe applicant who fails to comply with the specified time period due to the Covid-19 pandemic may still fulfill the requirements before a decision is rendered by TIPO. Considering the impact of the pandemic, the applicant who finds it necessary to extend the original specified time period could submit a written statement accompanied by evidence thereof. TIPO will follow the examination guidelines and have the cases determined leniently on a case-by-case basis.The applicant who is still unable to fulfil the requirements during the aforementioned extension of specified time period could submit a statement to TIPO with evidence thereof. In principle, TIPO will approve another one-month extension if it deems it appropriate. However, if the evidence in the case shows that an extension of more than one month is needed, TIPO will then approve an appropriate period of time of longer than one month.
The 2020 National Invention and Creation Award now opens registration until June 30The 2020 National Invention and Creation Award will select from the technologies that have been patented in Taiwan over the past six years (January 1, 2014 - December 31, 2019) and present trophies and cash prizes to inventors of the selected technologies for their extraordinary contribution.According to past winners, the National Invention and Creation Award adds values to their patented creations and helps in terms of promoting and increasing sales of theirproducts. Local inventors are welcome to register for competition.The cut-off date of the registration is June 30. Inventors interested in the award should send the specified documents of their inventions via registered mail or submit in person at their earliest convenience to this address: 11F., No. 149, Sec. 3, Xinyi Rd., Da’an Dist., Taipei City 106, Taiwan.For more information (in Mandarin), please visit:The National Invention and Creation Award
TIPO publishes the “Program for Hearing Patent Invalidation Cases” in EnglishTIPO has recently published the “Program for Hearing Patent Invalidation Cases” in English as part of its continuous efforts to improve services to foreign applicants. The English version is now available on the TIPO’s website.English version
The Seminar on IPR Concerning Traditional Intellectual Creations of Indigenous Peoples and the Cultural and Creative Industry—a Well-Attended Event with Lively InteractionsOn May 29, TIPO and the National Taiwan Craft Research and Development Institute co-hosted the “Seminar on IPR Concerning Traditional Intellectual Creations of Indigenous Peoples and the Cultural and Creative Industry” in order to promote the awareness of IPR protection concerning indigenous people’s traditional intellectual creations and the cultural and creative industry.The lecturers selected by TIPO and the Council of Indigenous Peoples addressed issues concerning IPR and protection of traditional knowledge that may be faced by the cultural and creative industry. The topics of their lectures included protection of design patents and cultural and creative products, an overview of the cases relating to trademark applications and indigenous peoples’ cultural creations, must-know copyright concepts by cultural and creative industry operators, and practices of licensing exclusive right of using indigenous people’s traditional intellectual creations. There were lively exchanges of opinions among participants.
TIPO’s old official website stops service as of May 25, 2020 and the general public are advised to visit TIPO’s new website for IPR-related searchesBetween October 2019 and March 2020, TIPO had consecutively launched the new subsidiary websites featuring three primary subjects, namely patent, trademark, and copyright. The old websites were no longer in service as of May 25, 2020.For more information, please visit:TIPO’s new official websiteTIPO’s new patent websiteTIPO’s new trademark websiteTIPO’s new copyright website
TIPO offers six services to fight against COVID-19As a response to the continued spread of COVID-19 around the world, TIPO offers the following six services, “patent analysis for the ‘national mask team,’” “making the information of global pandemic prevention relevant patents accessible,” “potential COVID-19 drugs related Taiwan patent information,” “ pandemic prevention related trademark hotline,” “reinstatement if applicants fail to comply within a statutory time period,” and “smart home consultations plus online applications,” to facilitate the diffusion of technologies, help industry focus on R&D, and instill new energy into the fight against the disease.To fight against COVID-19, the world is in the competition for making test kits, medicine, and vaccines. Following this R&D trend closely, TIPO provides the needed information and services to industry:Patent analysis for the “national mask team”As a response to the Covid-19 pandemic, the Ministry of Economic Affairs has gathered up domestic mask companies to form a “national mask team” to boost mask production capacity. More than 20 countries have been drawn to purchase mask-related facilities in Taiwan so far. While our “national mask team” sets out to help the world, TIPO releases patent information relating to mask-producing facilities and technologies around the world, so that our nationals will not commit patent infringement when they enter the global market. TIPO is ready to help, if any patent analysis is needed.Making the information of global –pandemic prevention relevant patents accessibleA pandemic prevention section has just been established in TIPO’s Global Patent Search System(GPSS). The items are divided into 14 groups, such as masks, protective clothing, test kits, vaccines, and medicine. With just one lick, users can find the information of patents relating to epidemic prevention in the world. Also, members of the GPSS will receive notes on the latest patent cases in chosen technical fields. They may enjoy a range of added-value services such as statistical and chart-based analyses. TIPO aims to help industry quickly learn the key information of pandemic prevention technologies globally.Potential COVID-19 drugs related Taiwan patent informationSince vaccines against COVID-19 are not yet available, medical experts home and abroad are urgently looking for effective solutions. In the short term, “Old drugs, new uses” is thus considered the most convenient and safest option.Starting in March, TIPO has released drug approval status and patent information of 52 potential medications in the limelight around the globe for combating COVID-19. Such include remdesivir, hydroxychloroquine, favipiravir, and ivermectin (for parasite control). The medications are divided into three categories according to their patenting conditions: 1. the core patent of its main active ingredient is under protection in Taiwan; 2. the core patent of its main active ingredient is not under protection in Taiwan, but other non-core patents are; 3. the medication is not protected in Taiwan at all.Through the aforementioned information, TIPO hopes to assist medical and pharmaceutical companies in learning more about relevant patents, and thus able to quickly develop business strategies, such as seeking a licensing agreement with the patent holder, designing around the original patent, or just leaving any possibility of patent infringement behind. For the welfare of the people in Taiwan, we hope to see a timely development of drugs against COVID-19, and that the drugs can become available soon.Pandemic Prevention related trademark hotlineHypochlorous acid, hand sanitizer, pressure-free mask covers, and protective clothing are all popular products during the COVID-19 outbreak. To meet applicants’ needs, TIPO has sorted out a categorized list of the “names of pandemic prevention products and services. An online application with all of the designated goods or services indentical to those terms on the said list or recommended in TIPO’s e-filing system will get an NT$300 fee reduction. Consultation hotlines are also available now – TIPO will help applicants conduct trademark search, and suggest them whether their applications may be successful or not. This shall help companies to quickly apply for trademark registration while lowering marketing risks. The service is available from now until May 31, and may be extended depending on the circumstances of the outbreak.Reinstatement if applicants fail to comply within a statutory time periodIf patent or trademark applicants fail to comply within a statutory time period for application and other procedures, such as paying certificate fees or patent annuity, and requesting substantive examination or re-examination due to COVID-19, the applicants may ask TIPO for reinstatement upon presenting documents as evidence. In principle, such cases will be determined leniently.Smart home consultations plus online applicationsTIPO still provides patent and trademark consultation services during the outbreak. Without having to go out, with just one phone call, people can enjoy consultation services by professional volunteers. Applicants also may file patent and trademark applications online. Patent applications can get an NT$600 fee reduction and trademarks at NT$300!The details of the six measures have been released at the “IPR News related to COVID-19” section. By providing patent information, offering professional consultation services, and accepting reinstatement applications, TIPO hopes to ensure people’s rights and interests, facilitate the spread of innovative technologies, and help R&D specialists find solutions for Covid-19.
Registration for Invention Contest of Taiwan Innotech Expo starts nowThe 2020 Taiwan Innotech Expo will take place from September 26 to 28 at Hall 1 of the Taipei World Trade Center. A total of 500 global institutions from 25 countries will display 1,200 patents and inventions. The expo is Taiwan’s most iconic R&D platform, and it draws more than 45,000 visitors every year. The 2020 expo is likely to be filled with people again. All members of the society are encouraged to take part.The expo is mainly divided into two parts, Invention Contest and Three Major Themed Topics. For the contest, outstanding inventors, professionals, and scholars in the world are invited to show their new works. Every year, TIPO receives more than 600 entries on average. By holding the contest, TIPO aims to encourage the most innovative inventions with the best market potential with awards. Registration for this year’s contest will remain open until June 30. Interested members of the industry, academia, and R&D are especially welcome to compete for the Platinum Medal and to make their works more attractive in the business world. There is also a hall that shows the inventions of the past three years by Taiwanese nationals, which have been awarded at competitions worldwide. The hall manifests the rich energy for innovations of the people in Taiwan.Three Major Themed Topics was curated by seven ministries and councils together - Ministry of Economic Affairs, Ministry of Science and Technology, Ministry of Education, Ministry of National Defense, Ministry of Labor, Council of Agriculture, and National Development Council, focusing on technologies of the future, innovative inventions, and sustainable development. Bringing together the innovative technologies that the seven ministries and councils have helped to develop, the area manifests Taiwan’s scientific R&D achievements. According to each topic, an international technology exchange display is set, showing the globe’s recent highlights. The goal is to build cooperation channels and for industry, academia and R&D institutions home and abroad, whilst creating more opportunities.More information (in Mandarin)
Seminar on IPR Concerning Traditional Intellectual Creations of Indigenous Peoples and the Cultural and Creative IndustryTo promote intellectual property protection for traditional intellectual creations of indigenous peoples in the cultural and creative industry, and to boost innovative energy and add values to the local sectors, TIPO will hold the Seminar on IPR Concerning Traditional Intellectual Creations of Indigenous Peoples and the Cultural and Creative Industry on May 29, 2020 at National Taiwan Craft Research and Development Institute, with the institute’s support.The seminar discusses IPR topics relating to traditional intellectual creations of indigenous peoples in the cultural and creative industry, from four aspects including design patent, trademark, copyright, and traditional intellectual creations of indigenous peoples. Cultural and creative workers, designers, and IPR professionals are especially encouraged to take part.For more information (in Mandarin), please visit:Agenda for the Seminar on IPR Concerning Traditional Intellectual Creations of Indigenous Peoples and the Cultural and Creative Industry
Establishing patent foundation– TIPO carries out an exchange and cooperation program with College of Design, National Taiwan University of TechnologyTo facilitate exchange between the academia and TIPO regarding theory and patent practices in the field of design, and strengthen IPR protection in Taiwan, this year, for the first time, TIPO carries out a one-year program with College of Design, National Taiwan University of Technology, sending patent examiners to the campus to discuss patent matters with teachers and students. Through the program, patent examiners will exchange views with industry experts, professors and students in class, learn about upcoming design trends together, and provide IPR consultation services.Through such experimental interaction and co-learning, TIPO looks forward to mapping out policies of design protection for the next generation. TIPO also hopes to cultivate interdisciplinary designers and increase competitiveness for them.
Encouraging industrial cluster and developing supply chains, TIPO offers IP courses and consultation services to the electric motorcycle industryTo save energy and lower carbon emissions, the Ministry of Economic Affairs has devoted to promoting the electric motorcycle industry in Taiwan. In 2014 and 2018 respectively, MOEA implemented programs to subsidize the consumption of electric motorcycle in the hope of boost domestic market grow as well as developing relevant supply chains.With MOEA’s effort, the supply chains for the electric motorcycle sector in Taiwan is rather complete now, including upstream materials / components (batteries, motors, and the main vehicles), mid-stream components / sets (chairs, lights, and dampers), and down-stream systems (power, battery management, and drives/brakes) and whole vehicles (electric motorcycle). In support of the MOEA, this year (2020), TIPO offers IP (patent, trademark, and trade secrets) consultation services and courses to the electric motorcycle industry, such as how to apply, search, and prepare for examination or even litigation. TIPO hopes to enhance protection for the electric motorcycle sector’s intellectual property, such as innovations and R&D results.
TIPO’s Q1 2020 IPR Statistics ReportIn Q1 2020, TIPO received a total of 16,680 applications for invention, utility model and design patents, registering a 3% decrease over the same period last year. Of these, design patent applications filed by non-residents saw a 2% growth. Applications for trademark registrations (20,310 cases) were up by 4%; of these, the number of trademark applications filed by residents grew by 7%. Among domestic applicants, TSMC filed the most invention patent applications and NITTO DENKO, in terms of foreign applicants, topped the list. In addition, invention patent applications filed by domestic SMEs grew by 9%.PatentOf the applications filed by residents (8,381 cases), both invention and utility model patents saw a 3% decrease (Table 1). Applications by residents slipped 4% mainly because of the decline in invention patents by enterprises and utility model patents by individuals.Of non-residents’ applications (8,299 cases), design patent applications grew slightly by 2%, a growth of six consecutive quarters (Table 1).Invention patent applications filed by domestic enterprises accounted for nearly 76%. Of these, applications by SMEs grew by 9%, marking the eighth quarter of consecutive growth. This shows its increasing importance in Taiwan. As to applicants, TSMC filed the most invention patent applications (129 cases). AU OPTRONICS (114 cases) and REALTEK (111 cases) secured the second and the third place respectively (Figure 2).Invention patent applications filed by domestic colleges increased by 15%. Of these, NATIONAL CHIAO TUNG UNIVERSITY and NATIONAL CHENG KUNG UNIVERSITY, both filing 19 applications, tied for first place.As for non-residents’ applications, Japan topped the list with 3,525 invention patent applications (Figure 1). Among the largest filing companies, NITTO DENKO came on top with 148 cases and outperformed others by an increase of 92% in this period (Figure 2).In terms of design patents, US filed the most applications with 260 cases. Applications filed by the top five filing countries (regions) saw a double digit growth except that applications filed by Japan were down (Figure 1). FORD GLOBAL took the lead with 93 cases, accounting for a growth of 145%.TrademarkApplications for trademark registrations (20,310 cases) were up by 4% from the same period of last year. Applications filed by residents (15,008 cases) increased by 7%, whereas that by non-residents (5,302 cases) decreased slightly. Residents’ applications registered a positive growth for four consecutive quarters (Table 1), and their share rose from 71% in Q1 2018 to 74% in the current quarter.Looking at a breakdown by nationality of non-residents, Japan topped the list with 1,042 applications for trademark registrations. Among the top five filing countries (regions), US, R. Korea, and Hong Kong all saw a positive growth (Figure 1).A breakdown by the Nice class shows that class 35 (advertisements, business operation, etc.) received the most cases (2,729) by residents and class 9 (computer, technology products, etc.) received the most cases (1,091) by non-residents (Figure 3). In terms of growth rate, applications filed by residents and non-residents saw a 41% growth in class 37 (construction services, installation, repair services, etc.) and an 18% growth in class 12 (vehicles), respectively.ROEHL and DAHAN of domestic applicants and TURRITOPSIS of foreign applicants tied the first place with 80 cases (Table 2 and 3).For more statistical details, please visit TIPO's website.
TIPO-JPO Permanent PPH MOTTAINAI Program Comes Into Effect on May 1, 2020The Patent Prosecution Highway (PPH) pilot program between Taiwan and Japan will come to an end on April 30, 2020. In view of its excellent performance, both sides agreed that a permanent PPH program will be in place, starting on May 1 this year. The permanent program is aimed at continuing to provide applicants with stable and convenient PPH services.Taiwan and Japan have enjoyed a close economic and trade relationship. For long years, Japan outnumbers other countries in invention patent applications filed in Taiwan. Last year (2019), TIPO received as many as 13,198 invention patent applications from Japanese applicants. On the other hand, JPO received a total of 1,548 invention patent applications from Taiwanese applicants. To speed up examination so that applicants could acquire their patents quickly, since May 1, 2012, TIPO and the JPO have conducted the PPH pilot program. In 2014, the program was modified to PPH MOTTAINAI and extended for three more years in 2017.The request forms and details on the procedures of the permanent PPH MOTTAINAI can be found at TIPO’s website and JPO’s website now.
The public hearing on the draft amendments to the Copyright ActTo make better uses of copyrighted works and to balance different rights in the digital age, TIPO proposed draft amendments to the Copyright Act and held a public hearing on February 25, 2020 at Tsai Lecture Hall, College of Law, National Taiwan University to draw opinions from the public. More than 200 people attended the event, including representatives of collective management organizations (CMOs), as well as publishing, TV and music professionals.On the day of the event, the participants shared their views in regards to the content of the draft, in particular the difference between public broadcasts and public transmissions, the limitation of e-learning at schools, and criminal liabilities relating to copyright litigation. The participants also expressed their wish to know how to apply the amended regulations in the near future and the influences of such regulations. TIPO not only answered their questions on site, but arranged a Q&A sheet in written form afterwards and released it on March 6 on the office’s website. The draft amendments to the Copyright Act may be adjusted according to more feasible ideas proposed by members of society soon.The draft amendments to the Copyright Act were made to catch up with the latest trends in the digital age. Such amendments are expected to enhance protection of copyright holders, appropriately harmonize social interests as a whole, and boost growth in domestic cultural industry and add values of creativity, thereby increasing Taiwan’s competitiveness.For more information (in Mandarin), please visit:Notes on the public hearing on the draft amendments to the Copyright Act
New “Fast-Track” trademark examination mechanism to hit the road on May 1 for applicants to secure their rights quicklyTo encourage applicants to utilize TIPO’s e-filing application system and to speed up trademark examination, TIPO will enforce a “Fast-Track” mechanism soon. From May 1, 2020 on, the trademark applicants who pay their fees duly and whose documents meet the following requirements at the time of application will find their cases examined two months earlier than others: Only applications for plain trademark are eligible, excluding non-traditional trademark, certification mark, collective membership mark and collective trademark.The names of the designated goods or services are exactly the same as the ones listed in TIPO’s e-filing system.The fees are paid through a designated bank account or an electronic payment sheet in printed form by the counter or via eATM.A power of attorney should be presented if there is an agent or agents in power.The system will determine whether a case is fit for the Fast-Track mechanism. If the case meets all of the aforementioned requirements, it will automatically enter into the mechanism without an additional application form or extra fee.Once all requirements are met, this type of applications will be prioritized for examination. The applicant should expect to know whether his or her trademark can be registered 1.5 months earlier than the current average first action (FA) period. This will help the applicant use his or her trademark to expand business activities and build a portfolio sooner. Nevertheless, the “first-to-file” principle still applies here. That is, the applications which arrive at TIPO first will still be registered first, thus expelling late comers.The qualified trademark applications cases will be noted as “Fast-Track cases” in a detailed form in TIPO’s trademark search system about 1 month after e-filing, and its status will also be shown. Feel free to utilize the service!For more information (in Mandarin), please visit:Fast-Track Q&AAbout the Fast-Track mechanism
Information about the 2020 Seminar on Patent Laws and onsite Q&As are outFour sessions of the “2020 Seminar on the Points to Amendments to the Patent Examination Guidelines on Medical-related Inventions and Cases Relating to Emerging Technologies” were held in Hsinchu, Taichung, Tainan and Kaohsiung recently. Despite of COVID-19, attendance rate was an impressive 85% and the occasion was zealously embraced by the audience. The Taipei session was suspended due to the pandemic, but all relevant information and the onsite Q&As are now available at TIPO’s website. Please feel free to download the materials.For more information (in Mandarin), please visit:Information about the 2020 Seminar on Patent Laws and onsite Q&As
Online celebrations are held for World IP Day on April 26In 2000, the World Intellectual Property Organization passed the proposal of designation for World IP Day on April 26-the day on which the WIPO Convention came into force in 1970, and have celebrated this special day annually since 2001. Many countries in the world have held various celebrations for this day in ways that are close to daily life, based on its theme of the year. This year's theme is "Innovate for a Green Future.” Innovation and intellectual property right that supports such innovation being the core of a green future, these celebrative events explore how intellectual property right can boost green economies and strengthen the protection of nature, thereby attracting consumers with “green IP” in the globe’s markets.Celebrating the World IP Day with our global counterparts, TIPO has just published a series of feature stories on its Facebook page and held a Q&A contest with small prizes. TIPO hopes that the events will help people to learn the roles of IP in their daily lives. Feel free to check TIPO’s news in April at TIPO's Facebook page.
Register for the honorable 2020 National Invention and Creation Award nowTo promote innovation, encourage people to invent and create, and boost industrial development, TIPO is to hold the National Invention and Creation Award again in 2020 with NT$8.8 million cash awards. By choosing top-quality patents and awarding excellent inventors, TIPO hopes to speed up the commercialization and industrialization of patents, thereby instilling new energy into the country’s economy and helping it to grow.There are two categories for the award: invention and creation. Both categories are open to inventors, creators or designers who have obtained an invention, a utility model patent, or design patent in Taiwan over the past six years. Other than receiving grants, certificates of merit, and trophies, the winners will be invited to display their works at the 2021 Taiwan Innotech Expo free of charge, thus winning more business opportunities!To explain the selection process, TIPO will hold six information events throughout Taiwan, respectively in Hsinchu (May 4), Tainan (May 5), Kaohsiung (May 5), Hualien (May 8), Taichung (May 12), and Taipei (May 15). Please feel free to take part.For more information (in Mandarin), please visit:The award websiteRegister online for the information event
Professional events for patent attorneys held by TIPO in 2020To ensure applicants’ rights and to improve the quality of services provided by patent professionals, patent attorney and patent agent should participate in the training related to Patent Attorney expertise every two years during practice; the required minimum number of hours is twelve. This year, TIPO will hold such events including 2020 Seminar on the IP Landscape in New Southbound Countries, Seminars on IP Affairs, and 2020 Seminar on the Global Patent Search System and Its Applications (see attachments). Those interested are welcome to take part. However, please be noted that the schedules for the aforementioned events may be adjusted depending on how the COVID-19 pandemic goes. For the latest updates, keep an eye on TIPO’s website.More information (in Mandarin)
Registration welcome for the 2020 TIPA classes designed for IP professionalsIn an age of knowledge economy, intellectual property right is the key to getting ahead of the game and grasping opportunities quickly. To strengthen IP professionals’ capabilities at work, TIPO entrusted the Taiwan Intellectual Property Training Academy (TIPA) under the Graduate Institute of Interdisciplinary Legal Studies, College of Law, National Taiwan University to run training courses for them. Registration starts now and the courses will begin in February onwards. Those who are interested are encouraged to take part.TIPO investigated into corporate IP professionals’ needs and designed courses for patent and trademark certification exams for IP professionals. TIPA provides the following eight classes: (1) IPR Basics, (2) Drafting Patent Specifications, (3) Patent Examination Guidelines, (4) Patent Application Formality Management for Patent Engineers, (5) Patent Search and Analysis, (6) Trademark Application, Management, and, Enforcement, (7) IP Litigation – Basic, and (8) IP Litigation– Advanced.All of the aforementioned classes are lectured by the best scholars and experts from universities, the government and industry, who are eager to share their professional knowledge and hands-on experiences. The training courses are expected to significantly increase one’s professional IP capabilities if he or she wishes to join the IP industry, to learn about IP practices, or simply to learn a bit more about IP.Also, TIPO will hold certification exams for intellectual property professionals in July and August. With a major focus on the practice, this is the first certification exams designed to test the professional capacity of IP practitioners in Taiwan. Both IP professionals and aspiring talents are encouraged to join the exams.TIPA has conducted a survey among previous participants, too. As many as 80% of the participants thought the training courses were helpful for gaining more professional knowledge and skills. More than 70% also believed that, after the training, they would be able to effectively resolve challenges at work and to improve work efficiency. The survey result shows that the training was well received.Registration for the 2020 courses is open now. All interested members of society are encouraged to book their seats at the TIPA website.For more information (in Mandarin), please visit:Course informationIP certification exam information
TIPO releases 2019 PPH program statisticsIn recent years, the number of patent applications has seen a significant growth, due to rapid economic developments around the world. Thus, the globe’s IP offices are all actively signing Patent Prosecution Highway (PPH) programs to share examination results, thereby ultimately reducing the patent backlog. At this moment, TIPO has been in PPH cooperation with six countries: the United States (effective since Sept. 1, 2011), Japan (effective since May 1, 2012), Spain (effective since Oct. 1, 2013), South Korea (effective since April 1, 2015), Poland (effective since August 1, 2017), and Canada (effective since Feb. 1, 2018), to help applicants acquire patent examination results sooner.As of end of 2019, Taiwan-US and Taiwan-Japan applications have taken up the largest proportion of the total PPH applications, at 3,007 and 3,529 respectively. In 2019 alone, the number was 455 and 427 respectively. On average, in 2019, it took 47.4 days for an applicant to receive an Office Action (OA) and 118.5 days to receive examination results of a PPH case. PPH has truly reduced the time needed in comparison with invention patent applications which requires 258.3 days for an applicant to receive an Office Action (OA) and 407.7 days to receive examination results, and thus beneficial to patent applicants in terms of acquiring their rights in the contracted countries. TIPO will actively formulate PPH cooperation frameworks with international counterparts. Through this mechanism, TIPO looks forward to assisting applicants in expanding their patent portfolios around the world, in addition to improving patent examination efficiency.More information (in Mandarin)
Activities of the 2020 IPR Service Group will kick off at end of MarchTo advocate intellectual property rights (IPR) protection, TIPO gathers up IPR experts and scholars to form the IPR Service Group, which gives lectures across Taiwan throughout a year to fulfill society’s needs. As long as there are 30 attendants or more, any school or institution can ask TIPO to give a two-hour lecture for them. For companies, a minimum of just 20 attendants are required. The date of lecture and the issues to be discussed may be decided by the applicant, and all this is free of charge. For the latest updates, please visit the TIPO website.
TIPO Publishes the draft amendments to the Copyright Act on January 30, 2020To make Taiwan’s copyright laws more comprehensive, TIPO decided to propose draft amendments to the Copyright Act in terms of the major issues that can affect the public deeply. In total, 32 articles were amended, 5 articles were added, and three articles were deleted. The points to the amendments are as follows:In response to recent technological development, TIPO amended the definition for public broadcasting and public transmission, and added the right to simultaneousfurther to the public.TIPO discussed who should enjoy the copyright and whether this would be reasonable. TIPO also amended the person(s) to enjoy the economic right in a contract between an employer and an employee. , it amended the legal relationship between the and the , so that no matter the is a natural or juristic person, the must serve as the author according to the contract between the two parties, thereby meeting the actual needs.To facilitate the circulation and use of works, TIPO amended the rules for moral rights. It excluded the performer’s right to public release his or her work, and also amended the definition for public release.TIPO amended the definition for the fair use of the limitations on economic rights, including the fair use of long-distance courses of schools and that of browsing through texts online of libraries under certain conditions. TIPO also amended the fair use of a work for not-for-profit activities – the organizer of a regular, not-for-profit activity may use the work upon a fair amount of remuneration, without having to acquire the of the rights holder. As to people who play music with their own devices for dancing in a park, no licensing or payment is needed.About amending the rules for compensation for damages:Amendments were made to the rules of the burden of proof for claiming compensation. The injured party may ask the court to set a compensation amount between NT$10,000 and NT$1 million depending on the details of damages.According to the amendments, the injured party may choose to claim compensation for damages his or her licensing fee. This shall encourage the injured party to accept civil compensation instead of criminal litigation.About amending outdated rules for criminal liability:Delete minimum imprisonment of six months for some minor infringement of copyright. The court may set the details of the punishment according to the cases, so as to avoid over-punishment.The persons who sell authentic goods imported from overseas in Taiwan without authorization will not be bound by criminal liability anymore.Delete the criminal punishment for distributing authentic goods, for which civil remedy is available under current Act. This shall set it apart from the liability for distributing counterfeit goods.For more information (in Mandarin), please visit:A general description to the draft amendments to the Copyright ActA comparison table of the current and the amended Copyright Act in draft
Patent and trademark applicants may ask for reinstatement if failing to comply within a statutory time period due to the heated COVID-19 outbreakAs the title of this article suggests, if the delay of a statutory time period is caused by natural calamity or other causes not attributable to the applicant, according to Article 17 of the Patent Act and Article 12 of the Enforcement Rules of the Patent Act, or Article 8 of the Trademark Act and Article 9 of the Enforcement Rules of the Trademark Act, the applicant may file a request for reinstatement.Any patent or trademark applicant who fails to comply within a statutory time period due to the COVID-19 may file a request for reinstatement accompanied by the documents of proof. In principle, such cases will be determined leniently on a case-by-case basis.
Version 11-2020 of the Taiwan-Japan Concordance of Similar Group Codes is releasedIn conjunction with the modification to the 11th Edition-Version 2020 of the Nice Classification made by the World Intellectual Property Organization, TIPO renewed the Taiwan-Japan Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2020 (NCL11-2020), as a reference for Taiwanese and Japanese trademark registration applicants to utilize this List when searching for currently registered trademarks.More information (in Mandarin)
TIPO’s Q4 2019 IPR Statistics ReportIn Q4 2019, TIPO received a total of 20,141 applications for invention, utility model and design patents, a year-on-year increase of 2%. Of these, design patents saw a 14% growth. Applications for trademark registrations totaled 22,533 cases, the highest since 2003. Design patent applications filed by residents and utility model patent applications by non-residents grew by 28% and 21% respectively. As to invention patent applicants, TSMC and APPLIED MATERIALS led resident and non-resident applicants respectively.PatentInvention patents (13,232 cases), utility model patents (4,628 cases) and design patents (2,281 cases) saw a year-on-year growth. The number of applications grew mainly because of the 14% growth in design patents (Table 1).Of residents’ applications, invention patents (5,506 cases) and utility model patents (4,288 cases) registered a slight year-on-year decrease. Design patent applications (1,216 cases) were up by 28% because of an increase in individuals’ and enterprises’ applications (Table 1). The share of residents’ design patent applications grew to the current 53% from 47% in Q4 2018.As for non-residents’ applications, invention patents (7,726 cases) and design patents (1,065 cases) grew slightly. Utility model patents (340 cases) grew significantly by 21% because of the increasing applications from mainland China (Table 1, Figure 1). Design patent applications grew by 1%, ending the double-digit growth for four consecutive quarters (Table 1).As to invention patent applications filed by domestic enterprises, TSMC led with 371 cases, followed by ITRI (240 cases) and ACER (168 cases). TSMC and ACER registered significant year-on-year growth of 25% and 68% whereas IRTI dropped by 12% (Figure 2).Invention patent applications filed by domestic enterprises took up nearly 71%. Of these, SMEs grew by 6%, following growth since Q2 2018, and indicating their placing greater emphasis on protecting technologies through patents.Invention patent applications filed by domestic colleges and research institutions registered year-on-year decrease of 4% and 16% respectively.As to invention patents filed by non-residents, Japan led by 3,293 cases, followed by the US (1,692 cases) and mainland China (764 cases)(Figure 1). Among the top filing foreign companies, APPLIED MATERIALS came on top with 178 cases, registering a year-on-year increase of 125% (Figure 2).In design patents, Japan also led by 326 applications. Among the top five filing countries (regions), applications from Japan, the US and Italy increased with Italy registering a significant growth by 445% (Figure 1). Among foreign companies, APPLE topped with 54 cases.TrademarkNew applications for trademark registration (22,533 cases) set a record high since 2003. Applications filed by residents (16,233 cases) increased by 7% whereas non-residents’ applications (6,300 cases) decreased by 2% (Table 1). Residents’ applications grew for three consecutive quarters. Their share rose from 70% in Q4 2017 to 72% in the current quarter.Breakdown by nationality, mainland China led by 1,395 cases, followed by Japan (1,264 cases) and the US (882 cases)(Figure 1). Among the top five filing countries (regions), mainland China, Japan, and the US decreased applications while Korea and Hong Kong grew by 43% and 22% respectively (Figure 1).
TIPO publishes the “2018 Guidelines on the Best Licensing Practices of Collective Management Organizations (CMOs) to MSMEs”TIPO's implementation of the APEC‘s project on the "2018 Guidelines on the Best Licensing Practices of Collective Management Organizations (CMOs) to MSMEs" was concluded successfully. This guideline is intended to help the CMOs of APEC economies to step up convenient licensing channels, stay abreast of relevant policy development, increase the competitiveness of CMOs and MSMEs in the digital age, and jointly create a better environment for licensing.
TIPO Statistics Report: Patent and Trademark Applications in 2019In 2019, overall patent applications increased by 2% to 74,652 cases. Of these, invention patent has grown for three consecutive years (grew by 2% in 2019). Design patent rose by 9%, while the decrease in utility model patent applications narrowed. On trademark applications, 86,794 cases were filed, the highest since 2001. As to examination efficiency, the average disposal pendency was shortened to below 14 months and 7 months for invention patent applications and trademark applications respectively. This stable and reasonable pendency was maintained to provide applicants with fast and high-quality examination services.Of overall patent applications, both invention patents (48,268 cases) and design patents (8,804 cases) were up; the decrease of utility model patents (17,580 cases) narrowed to 2% from 8% in 2018 (Table 1, Fig. 1).Invention patent applications (18,984 cases) filed by residents hit a 5-year high. This was due to a 6% rise in the number of applications filed by corporations and those by large enterprises (+6%) and small and medium size enterprises (SMEs) (+7%) also saw growth. Utility models (16,412 cases) and design patents (4,208 cases) dropped by 1% (Fig. 2, Fig. 3) from last year. As for non-residents’ applications, invention patents (29,284 cases) rose by 1% and design patents (4,596 cases) grew by 20% (Fig. 2).Breakdown by applicants’ nationality, Japan continued to top with 14,598 overall applications, followed by the US (7,437 cases) and mainland China (3,698 cases). Hong Kong (1,282 cases) attained double-digit growth, climbing to the fifth place and replacing Germany. Japan also led in the number of invention and design patent applications, and mainland China outnumbered other countries in utility model applications (Fig. 4).In trademark, the number of applications (86,794 cases) hit a record high in 19 years. This was due mainly to a 3% increase in resident applications (61,928 cases). Applicants by non-residents (24,866 cases) remained relatively the same as last year (Table 1, Fig. 5).Among the top 5 trademark filing countries (regions), mainland China (6,108 cases) took the lead, followed by Japan (4,748 cases) and the US (3,621 cases). Applications filed by Korea (1,668 cases) and mainland China were up by 16% and 6% respectively, while those by Japan remained relatively the same as last year (Fig. 6).Of residents’ trademark applications, Nice class 35 (advertisements and business operation) topped with 11,040 cases, followed by class 43 (restaurants and lodgings; 6,620 cases) and class 30 (coffee, tea, and pastry; 6,235 cases). Applications filed by the top 5 classes all saw a growth by 2%-6% (Fig. 7). Among resident applicants, UNI-PRESIDENT ranked first with 432 cases, followed by TAICHUNG CITY GOVERNMENT (360 cases) (Fig. 8).Of non-residents’ trademark applications, class 9 (computer and technology products) led with 4,761 cases, followed by class 35 (advertisements and business operation; 3,239 cases) and class 3 (cosmetics and detergents; 2,902 cases) (Fig. 7). Among non-resident applicants, HUAWEI led with 166 cases, followed by LINE with 138 cases (Fig. 8).As invention patent and trademark applications had both increased, TIPO went at full throttle to step up examination efficiency. As a result, the average disposal pendency was 13.6 months for invention patent applications and 6.7 months for trademark applications. Pending applications for both invention patent and trademark applications were maintained at about 48,000 cases (Fig. 9, Fig. 10) to help businesses quickly obtain IP rights and begin developing portfolios.
Guidebook for Trade Secret Protection 2.0To help companies establish thorough mechanisms for protecting trade secrets, previously in 2013, TIPO already published the Guidebook for Trade Secret Protection. Six years have passed since then, and TIPO has gained many more experiences in this field. What’s more, the guide needs a few amendments in order to catch up with the latest trends. TIPO therefore released the Guidebook for Trade Secret Protection 2.0 for companies to use. The points of the latest amendments are as follows:The implementation procedures of reasonable confidentiality measures being a main focus, the guide takes into account relevant court rulings to advise companies on how to set up such confidentiality measures.Included actual litigation practices and the strategies which companies may take to help judicial officials with judicial investigations.In the Q&A session, added notes for assessing trade secret protection, the timing for carrying out such protection, and the ways to fulfill relevant duties.More information (in Mandarin)
Amended chapter on medical-related inventions in the Patent Examination Guidelines came into force on January 1, 2020Amendments to Chapter 13, Part 2, of the Patent Examination Guidelines (hereinafter referred to as “the Guideline”) on medical-related inventions were published on November 5, 2019 and they came into force on January 1, 2020. The amendments were made to catch up with the fast-changing medical industry and the many types of medical-related inventions filed in Taiwan. Relevant court rulings and examination guidelines in the UK, Europe and Japan were taken into account to make the amendments, and new cases were added as explanatory supplements. On the clarity of claims, in practice, disputes concerning the explanation and applicability of the claims are common. This issue was addressed in the amendments, too. Considering the latest technological developments in the medical industry and the application and examination practices concerning medical inventions in Taiwan, other contents of the Guideline were also reviewed. Finally, TIPO adjusted the frameworks of certain parts of the Guideline, specified relevant rules, and modified a few descriptions as fit, to make the Guideline more complete.The points of the amendments are as follows:Adjusted the content which is not consistent with that of the relevant chapters in the Guideline. 126.96.36.199 in Paragraph 3 “its immediate purpose is to obtain the diagnostic result of a disease” did not conform with what’s written in Chapter 2 on definitions and general rules, and therefore it was modified.The content of 2.2.1 “Claims Which Include Therapeutic and Non-therapeutic Methods” was adjusted and supplemented. For the method patent applications which may bring about therapeutic and non-therapeutic results, TIPO drew references from the UK’s examination guidelines and adjusted and added relevant content, listing seven types of commonly seen therapeutic and non-therapeutic methods.Amended the rules for writing Swiss-type claims.Drew references from case examples in JPO’s guidelines and added explanatory notes on cases which “may not be supported by specifications.”Five cases of novelty were added, respectively relating to new medical use, new dosage regimen, new modes of administration, specific groups of patients, intervals of administration and the order for taking different kinds of medicine.A statement on the non-inventiveness of hydrates was added.Five cases with inventive steps were added, including two cases of dosage, one case about specific types of patients, one case about the relevance of pharmacological action, and one case about treating diseases which have the same causative factors.Others, such as revising contents of some cases, deleting non-relevant information, adjusting the frameworks of certain chapters, and specifying relevant rules and modifying a few descriptions, were made.More information (in Mandarin)
Feel free to utilize our Compilation of the Important Court Rulings on Trade Secret CasesTrade secret protection is becoming increasingly important. To assist businesses in catching up with Taiwan’s relevant judicial practices and trends, TIPO studied the civil and criminal cases relating to trade secrets from January 1, 2011 to June 30, 2019 from the courts of all levels and drew references from the Intellectual Property Court. A total of 76 cases, 57 civil and 18 criminal, were selected for making excerpts. Such include the legal battle between Largan Precision Co. and Ability Opto-Electronics Technology Co., the dispute about a cleanroom suit patent between ASE Inc. and its supplier, and a case about trade secret protection for Dairen Chemical Corp. Based on topics such as the three elements of trade secret; the civil liability, criminal liability, and evidence-keeping procedures for trade secret infringement; and confidentiality orders, TIPO has also created a compilation of the important court rulings on trade secret cases in Taiwan. The content of the compiled cases is available in the section on trade secret protection at TIPO’s website. All members of society are encouraged to utilize it.More information (in Mandarin)
The Legislative Yuan Passes the Trade Secrets Act that Introduces a Confidentiality order for Investigation SystemOn December 31, 2019, Taiwan’s Legislative Yuan passed the partial amendment to the Trade Secrets Act. This amendment introduces a “confidentiality order for investigation”system to strengthen protection of trade secrets during investigation proceedings. A person who violates a confidentiality order shall be liable to imprisonment for a maximum of 3 years. The new law will prevent trade secret leak during investigation, increase corporations’ willingness to file a lawsuit, and enable prosecutors to effectively and quickly conclude their investigations. This amendment also increases protection of foreigners’ trade secrets, so as to attract foreign investment and boost business development. For example, an unrecognized foreign juristic person may file a complaint, initiate a private prosecution, or institute a civil lawsuit.Below are key points of the “confidentiality order for investigation” system:A prosecutor may, if she/he deems it necessary, issue a confidentiality order ex officio during the investigation.A person subject to a confidentiality order shall not use the investigation information for purposes other than the investigation, or disclose such information to any person not subject to a confidentiality order.A confidentiality order shall be issued in writing or verbally, and a trade secret owner shall be afforded an opportunity to make observations. Procedures to cancel or change a confidentiality order, and the relation between a confidentiality order and a court order to preserve confidentiality are also stipulated.A person violating a confidentiality order shall be liable to imprisonment for a period not exceeding three years, and/or a fine not exceeding NT$1 million.
TIPO announced the draft amendments to the Trademark ActTo make sure the Trademark Act fits the country’s practice needs, starting from 2018, TIPO has been drafting amendments to the Act. Two consultation meetings, one attended by invited experts and scholars and the other on trademark examination quality, as well as a public hearing on the draft amendments to the Trademark Act, were held. Upon analyzing the suggestions provided by all circles of society on the public hearing on October 15, 2019, TIPO proposed the draft amendments to the Trademark Act (find the general description of the draft and a comparison table for the articles of the act before and after revision as attached.)In this latest draft, a total of 14 articles were amended and two new articles were added. The main points are as follows:Paragraph 2 of Article 6 specifies that the qualifications of trademark agents other than attorneys or agents who have been licensed to practice matters related to the trademark in question. Paragraph 3 of the same article sets the rules for registration requirements, as well as the managerial measures to be adopted by competent authorities, for trademark agents.The accelerated examination mechanism for trademark application will only be applicable to “cases of application for trademark registration” in the future. The contents amended in Paragraph 2, Article 14 of Chapter I (General Provisions) will be listed in Paragraph 8, Article 19 of Section I, Chapter II (Application for Registration) instead, and serve as the reference for setting a fee-charging standard for accelerated examination in Article 104, also amended. Specific guidelines will be in place soon for the public in line with the accelerated examination program of the invention patent application.Conditions such as “where a final judgment of the court has been rendered” in Sub-paragraph 15, Paragraph 1, Article 30 were to be deleted at first. However, many attendants of the public hearing noted that deleting such content may lead to more disputes. Since it has been difficult for TIPO to verify the conditions when examining a trademark application case, drawing references from Paragraph 2, Article 60 of the EU Trade Mark Regulation, we decided to move the content regarding the provision of reasons for approving/disapproving an application request in the sub-paragraph to Paragraph 2, Article 57 in the amended Trademark Act, as the grounds of invalidation filed by an interested party. After the parties have provided their reasons, TIPO will determine whether to perform the invalidation or not. Such is unbound by the five-year peremption period.Section IV, Chapter II (Opposition) was to be removed from the Trademark Act, and a consensus was reached among members of society at public hearings. However, as we are planing to amend the adversary system for trademark disputes, considering that it is better to make comprehensive structural changes instead of partial amendments, the section is retained for now. In the future, amendments on the adversary system will be made in a setting in which legal stability is prioritized.For more information (in Mandarin), please visit:A comparison table for the before and after revision articles of the Trademark ActGeneral explanation on the amendments to the Trademark Act
A new measure debuts - feel free to fill in our feedback form for trademark examination qualityTIPO just released the Feedback Form for Trademark Examination Quality on November 19, 2019. The goal is to help applicants learn more about the application status and resolve questions if any, in a shorter period of time. All members of society are encouraged to utilize the service.When filling in the form, an applicant is required to provide his/her name, email address, cell phone or land line number, subject, and content. If this has to do with a specific case, the applicant should specify the application or registration number, so as to facilitate the process. In principle, the agency in charge will send a reply within three business days upon reception of the form. In a special case or when the case relates to general principles, it might not be possible for TIPO to reply within three working days. Instead, the staff member in charge will contact the applicant by phone or email first, and then send another email to explain the follow-up dealings after discussions.All comments on the quality of trademark examination will be carefully taken into account for improving examination work and relevant procedures. However, if the applicant wishes to register trademark or remedy deficiencies, please send the required documents according to the laws in paper copies or through the electronic trademark application system, so as to avoid any delays which may affect the applicant’s rights. For more information (in Mandarin), please visit:Feedback Form for Trademark Examination Quality
TIPO inaugurated a new website on copyright for all to useTo improve public service quality and advocacy effectiveness, TIPO introduced new technologies and designs to its website. The existing single-format website has been reset as a main site with a few sub-websites. TIPO hopes to make it easier for people to find the information they need in the new setting, as some noted that it was difficult to find things although the site was informative.The main site was already launched in September this year (2019) and the new sub-website on copyright is also available now, upon certain online construction. In the meantime, the old site on copyright is still in operation. All members of the public are encouraged to utilize them.The features of the new sub-website on copyright are:In olive green, with geometric graphics. The visual structure conforms to that of the main site.The site is divided into a few sections according to the site’s content. Quick links and mega menus are provided, for users to quickly find the information they want to read.The other two sub-websites on patent and trademark are scheduled for completion by end of April next year (2020).Find our new webpage on copyright
Amendments to Patent Act, the Enforcement Rules of the Patent Act and the Regulations of Patent Fees entered into force on November 1, 2019The amendments to the Patent Act released on May 1, 2019 entered into force on November 1, 2019. Consequently, amendments to the Enforcement Rules of the Patent Act and the Regulations of Patent Fees were also released on September 27, and became effective on November 1 as well. The key points of the amendments to the two auxiliary rules / regulations are as follows:Enforcement Rules of the Patent ActArticle 29 will be deleted, since its content is now specified in Paragraphs 6 and 7, Article 34 of the Patent Act. (Article 29 was amended)Article 89-1 will stipulate the threshold for evaluating whether certain patent files are worthy of preservation, in conjunction with Paragraph 1, Article 143 of the Patent Act, which specifies that patent files deemed worth preserving by the Specific Patent Agency shall be permanently kept. (Article 89-1 was amended)Regulations of Patent FeesPrior to the implementation of the amendments of the Patent Act, according to Article 118 of the Patent Act, in terms of post-grant amendment requests of utility model patent applications, substantive examination would be adopted during invalidation proceedings, while formality examination would be adopted in all other cases. Thus, according to Article 5 of the Regulations of Patent Fees, when it comes to post-grant amendment requests of utility model patent applications, an NT$1,000 and an NT$2,000 fee would respectively apply alongside formality examination and substantive examination. Based on Article 118 of the amended Patent Act, however, in terms of post-grant amendment requests of utility model patent applications, substantive examination shall be adopted under all circumstances. Thus, the amended Article 5 of the Regulations of Patent Fees stipulates that the fee for utility model patent applications is now a unified NT$2,000. (Article 5 was amended)
TIPO’s Q3 2019 IPR Statistics ReportIn Q3 2019, TIPO received a total of 18,976 applications for invention, utility model and design patents, a 4% increase from the same period of last year. Applications for trademark registrations (22,275 cases) were up by 6%. The numbers of invention patent applications filed by residents grew, and design patent applications filed by non-residents saw significant growth. Among residents, TSMC filed the most invention patent applications. As for non-residents, ALIBABA topped the list.PatentOverall patent applications totaled 18,976 cases. Of these, invention patents (12,260 cases), utility model patents (4,452 cases) and design patents (2,264 cases) increased by 2-4% respectively from the same period of last year. The growth was mainly due to an increase in invention patents (Table 1).Of residents’ applications, the number of invention patents (4,918 cases) and utility model patents (4,148 cases) rose from the same period of last year (Table 1). Invention patent applications saw an 11% growth due to an increase in enterprises’ applications. Applications by enterprises sustained a positive growth for four consecutive quarters.As for non-residents’ applications, the number of invention patents (7,342 cases) and design patents (1,233 cases) increased with latter seeing a significant growth by 23% (Table 1). The increase of design patent applications was due to the rise in the number of applications from major countries (regions)(Figure 1).The number of invention patent applications filed by domestic enterprises increased by 15%. Of these, TSMC topped the list with 533 cases. AU OPTRONICS (120 cases) and MEDIATEK (96 cases) stood at the second and the third spot respectively. The top three enterprises saw growth in applications with TSMC registering a significant growth of 76% (Figure 2). Moreover, invention patent applications filed by domestic SMEs grew by 10%, indicating their increasing awareness in patent protection of R&D results.Invention patent applications filed by domestic colleges saw 13% growth, while those filed by research institutions remained stable.As to nationalities of non-residents, Japan topped the list with 3,194 invention patent applications (Figure 1). Among the top filing foreign companies, ALIBABA came on top with 315 cases, registering a 139% increase (Figure 2).In design patents, Japan also led by 299 applications. The applications filed by the top five filing countries (regions) saw growth (Figure 1). In terms of applicants, FORD stood on the top spot with 87 cases. TrademarkThe number of new applications for trademark registration (22,275 cases) increased by 6% from the same period of last year. Applications filed by residents (15,738 cases) and non-residents (6,537 cases) were up by 6% and 4% respectively (Table 1).As to non-residents, mainland China stayed on top with 1,755 cases, followed by Japan (1,235 cases). Applications filed by the top two filing countries (regions) saw a larger growth, resulting in an overall increase in non-residents’ applications (Figure 1).
The 2019 TIPO-CGPDTM Patent Examiner Exchange was a successThe 2nd TIPO-CGPDTM Patent Examiners Exchange took place from October 21 to 25, 2019 at the Taiwan Intellectual Property Office. With two assistant controllers from India’s Office of the Controller General of Patents, Designs and Trade Marks attending the occasion, the participants exchanged their thoughts on the patent regimes and examination practices in Taiwan and India, as well as discussed a few cases. The participants not only introduced their organizational structure, patent laws, patent regimes and examination practices, patent reexamination, invalidation and administrative remedies, but also discussed patent application cases in biomedical engineering, information communication technology, and computer implemented invention and software related inventions. A wide range of subjects includes search of prior art, scope of claims, specification formats, supplementary documents, requirements of accelerated examination, and patent eligibility were also covered. In addition, TIPO arranged visits to the Technology Transfer and Law Center of the Industrial Technology Research Institute and IC design industry for the Indian examiners to learn about ITRI’s assistance to local firms in commercializing IPRs and the recent developments of Taiwan’s IC design sector. In 2018, TIPO sent patent examiners to India to exchange thoughts on the two sides’ patent regimes and examination practices for the first time. Based on last year’s achievements, this year, both sides had deep discussions on the administrative litigation regimes and examination practices on biomedical engineering, information communication technology, and computer science. The participants also shared opinions about the cases which they are interested in. The event was a success and both TIPO and the CGPDTM look forward to holding similar events in the future.
Taiwan and Japan Strengthen Patent Examination Cooperation by Signing the MoUs on Patent Prosecution Highway (PPH) and on Design Patent Priority Document Exchange (PDX)Today (October 30th), the Taiwan-Japan Relations Association and Japan-Taiwan Exchange Association signed the MoUs on Patent Prosecution Highway (PPH) and on Design Patent Priority Document Exchange (PDX). Through the two cooperative programs, TIPO and the JPO will facilitate more efficient and convenient services for applicants.In May 2012, TIPO and the JPO launched the PPH pilot program, which was then modified to PPH MOTTAINAI in 2014 and was extended for three years in 2017. As of the end of September 2019, TIPO had received 3,426 requests for expedited examination, outnumbering other five ongoing PPH programs TIPO is currently partnering with. In addition, the pilot program remarkably sped up examination process, with first OA pendency averaging at 1.21 months and disposal at 3.77 months, respectively. In view of its excellent performance, TIPO and the JPO agreed that following the expiry of the pilot program, a permanent PPH program will replace it, starting on May 1, 2020. This permanent program is aimed at continuing to provide applicants with stable and convenient PPH services.Moreover, Taiwan and Japan in 2013 signed an MoU on PDX to facilitate electronic exchange of priority documents for invention and utility model patent applications. Since its launch, the PDX has been widely used by respective applicants. To expand the current scope of electronic exchange, TIPO and the JPO have decided to incorporate design patent priority documents. Once implemented, it will save applicants’ time on mailing paperwork, streamline cross-county application procedures, as well as make the exchange mechanism for priority documents more comprehensive. In the meantime, relevant IT systems on both ends are being developed and tested. The service is estimated to be officially launched in April 2021.Taiwan and Japan have been close in bilateral economic and trade relations. Japan tops all the other foreign countries in the number of patent applications filed with TIPO. Last year (2018), that number stood at 14,169. Of these, the numbers of invention and design patent applications respectively stood at 12,871 and 1,224, both also topping other countries. On the other hand, the number of patent applications filed annually with the JPO by Taiwanese applicants is close to 3,000. Through the above two cooperative programs, TIPO hopes to support relevant domestic industries to further develop their international competitiveness and that more applicants could be benefited.
TIPO to hold a public hearing for the 2019 draft amendments to the Trademark ActIn continuation of the discussions on the amendments to the Trademark Act last year (2018), and in response to global legal trends and Taiwan’s examination requirements, TIPO collected suggestions from experts and scholars at consultancy meetings on the amendments of the Trademark Act, trademark examination quality, and amendments to the procedures of administrative remedies for trademarks, to draft the amendments on selected articles of the Trademark Act. A public hearing took place at 2pm, October 15, 2019 for discussing the key points of the amendments. This is also to lessen impacts on trademark agents after the passing of the draft amendments to the Attorney Regulation Act.The main points of the amendments made during the meeting are as follows:Specify that the qualifications of trademark agents other than attorneys or representatives who have been licensed to practice matters related to the trademark in question, as well as the legal basis of relevant management rules. (See Article 6 in the draft)Specify that the ground of the competent agency may render a decision or send any other document(s) electronically (See Article 13 in the draft)Introduce accelerated examination for trademarks, as some institutions need to acquire their rights urgently. (See Article 14 in the draft)Specify that the applicable applicants of the Trademark Act in response to the marketing needs of commercial subjects. (See Article 19 (3) in the draft)Loosen regulations: easing the requirements for claiming the right of priority, assessing peemption of invalidation, and applying to revoke the registration. (See Articles 20 (4), 58 (2), and 65(1) in the draft)Specify the scope of acquired distinctiveness or functions of the reproduction of a trademark. (See Articles 29 (3) and 30 (4) in the draft)Specify the nominative fair use and earlier use with the bona fide of a trademark which are not limited by the effect of registration. (See Article 36 (1) (i) (ii) and (2))Abolish the opposition system, resolving opposition disputes of registration of a trademark through a unified invalidation system. (Deleting Section IV, Chapter II on opposition)More information (in Mandarin)
Amended Patent Act will enter into force on November 1, 2019The amendments to the Patent Act promulgated on May 1, 2019 will come into force on November 1, 2019. The main points of the amended act include: the term of protection of a design patent will extend to 15 years from 12 years; an applicant may file a request for division of patent application within three months upon receiving the approval decision of an examination or reexamination, and such a rule also applies to utility model patent applications; a request of invalidation should provide invalidation reasons or evidence within three months and no reviews will be made beyond this time period (also, there are time limits for patentees to file post-grant amendment requests during invalidation proceedings); there is a new time period allowed for utility model patentees to file post-grant amendment requests, and post-grant amendments to utility model patent will have to go through substantive examination rather than formality examination.Transitional provisions for the implementations of the amendments are as follows – please be aware of the differences:Extension of the period of design patent protectionThe term of protection of a design patent will still be 12 years if a design expires on the date of implementation of the amendments.The term of protection of a design patent will automatically extend to 15 years if its right is valid on the date of implementation of the amendments.Division of a patent application after the approval decision is servedIf an approval decision of an invention or a utility model patent application examination, reexamination served within three months prior to the implementation date of amended Patent Act the applicant may file a request for division of the approved patent application within three months after the date on which an approval decision is served.If an approval decision of an invention or a utility model patent application examination reexamination served three months the date of the implementation of the amended act, the applicant may not file a request for division of the approved patent application.Providing invalidation reasons or evidence for an invalidation action The invalidation requests, which have been accepted before the amendments enter into force but no decisions have been rendered, will be handled as follows:All reasons and evidence provided by the requester before the amendments enter into force will be examined.All reasons and evidence provided by the requester within three months after a request is filed will also be examined.Reasons and evidence provided by the requester beyond three months after a request is filed will not be examined.Filing post-grant amendment requests during invalidation proceedings During invalidation proceedings, the post-grant amendment requests for invention, utility model or design patents, if filed after the amended Patent Act comes into force, will be bound by the time limit as mentioned in the amended act. However, the requests will not be bound if the patents are involved in pending litigation cases.Post-grant amendments requestsThe post-grant amendment requests for invention and design patents that are not proposed during invalidation proceedings will not be bound by any time limit after the amended Patent Act come into force.The post-grant amendment requests for utility model patents, which have been accepted prior to the date of implementation of the amended Patent Act, will be substantively examined after the act comes into force. But no fees should be paid.The post-grant amendment requests for utility model patents, which are only filed after the day of implementation of the amended Patent Act, will be bound by the time limit as mentioned in the amended act, and a NT$2000 fee should be paid.
TIPO Hosts the “2019 Seminar on the IP Landscape in New Southbound Countries” on August 27-28On August 27-28, TIPO and Taiwan Patent Attorneys Association jointly hosted the “2019 Seminar on the IP Landscape in New Southbound Countries” at the NTU College of Law Tsai Lecture Hall. Mrs. Zaiton Nordin, Direcor of Patent Formality & International Registration Division of the MyIPO, Ms. Melanie G. Binauhan, Intellectual Property Rights Specialist IV/ Assistant Division Chief of the IPOPHL, Mr. Panja Haohan, Senior Patent Examiner (Professional Level) of the DIP, Mr. Phan Thanh Hai, Deputy Director, Patent Examination Center of the NOIP, as well as patent attorneys from Malaysia, the Philippines, Thailand, Vietnam, Indonesia, and India were invited to give lectures at the seminar. These lecturers shared information and exchanged feedback regarding patent regimes of respective countries, examination practices, and the things to note when filing applications and protecting patents for Taiwanese companies. Over 230 people comprising government officials, scholars, industry representatives, and patent attorneys attended the event and had lively interactions.Recent years have seen economic prosperity in New Southbound countries, now becoming a ginormous economic and trading market. Given this, IPR serves a key function of protecting and adding value to corporations’ operation results. When doing business or investing in New Southbound countries, corporations will increase development advantage if they are able to make good use of local IP regimes and formulate appropriate IP strategies. To increase domestic corporations’ understanding of IP regimes in New Southbound countries, TIPO in 2017 and 2018 held the “Seminar on IP Landscape in Southeast Asian countries,” which was well received. As such, TIPO hosted this year’s “Seminar on the IP Landscape in New Southbound Countries,” which was larger in scale than the previous events. The discussion addressed patent-related issues, which in turn may serve as useful reference for domestic corporations doing business or planning prospective investment in New Southbound countries.During the meeting, there was in-depth exchange of insights and experiences between participants, experts from the IP offices, and patent attorneys of six New Southbound countries. As such, the seminar did help domestic participants to better understand patent legal regimes and practices in these countries. The seminar was considered to be very successful among all the participants.
TIPO Welcomes Registrations for Participating in the ‘‘TIPO’s 20th Anniversary and Seminar on Retrospective and Prospective Look at the Copyright Act’’As a result of the development in emerging technologies in recent years, the types of copyright usage are becoming more and more diverse. To enable the public to understand the impact new technologies have on copyright legal regimes and judicial practices, to stay current with the key directions in international copyright regimes, as well as to strengthen the public's understanding of the relevant contents and applications relating to amendments to copyright laws in Taiwan and abroad, TIPO will host a seminar at the NTU College of Law Tsai Lecture Hall on October 4 (Friday), while also marking TIPO's 20th anniversary this year. The seminar will have four sessions addressing the following topics: "The Copyright Act facing the challenges imposed and opportunities provided by emerging technologies," "Case study of copyright judicial practices," "The Copyright Act responding to the new global trend in emerging technologies," and "Retrospective and prospective look at the Copyright Act." Scholars, experts, and industry representatives with experiences in actual practices will be invited to give lectures at the seminar. TIPO welcomes registrations from relevant agencies and the general public interested in the topics. For more information, please follow news feed on TIPO's official website and Facebook webpage.More information