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. 18.104.22.168 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