The 2019 TIPO-USPTO Exchange of Best Practices on Trademark ExaminationThe TIPO-USPTO Exchange of Best Practices on Trademark Examination was held at TIPO from March 25 to 28, 2019. USPTO sent two attorney-advisors from the Trademarks Team, Office of Police and International Affairs to share trademark laws and practices in the United States.On this occasion, a wide range of subjects of exchange were discussed, including the trademark application process, examination of marks for distinctiveness, acquired distinctiveness and disclaimers, examination on likelihood of confusion, well-known marks, bad faith applications, trade dress and non-traditional trademark examination, developments in U.S. trademark cases in the courts, and cases of online trademark infringement.While Taiwan and the U.S. do not always share the same views on legal regimes and individual cases, after exchange of ideas and in-depth discussions, new paths were found. This was helpful for both sides to find the best practices for trademark examination.
The 2019 International Seminar on Digital Piracy and Trade SecretsBecause digital piracy and trade secrets protection are the two main issues concerned by Taiwan and the U.S. governments, the Ministry of Justice, TIPO, the U.S. Department of Justice, and the American Institute in Taiwan (AIT) jointly held the Seminar at the International Conference Hall of the National Central Library on April 11 & 12. It was aimed at effectively enhancing investigation and professional knowledge for law enforcement agencies in such cases, in hope of strengthening cooperation between the two sides for combating illegal use of IPR and misappropriations of trade secrets.Five topics were discussed on the first day under the theme of ‘stemming digital piracy’: the role of the courts in stemming digital piracy, law enforcement in cases of digital piracy, the role of industry in stemming digital piracy, statutory approaches to stemming digital piracy, and ESI (electronically stored information) and trans-border cooperation for stemming digital piracy.On the second day, under the theme of ‘trade secret protection,’ six topics were discussed: private sector’s concerns about reporting trade secret thefts, protective orders for trade secrets during litigation, law enforcement outreach for trade secret owners, criminal cases relating to trade secrets, the role of experts in trade secret litigation, and the valuation of trade secrets.The speakers and attendants from Taiwan and the U.S. came from various sectors. For the U.S., there were federal and state courts, Department of Justice, Federal Bureau of Investigation, Department of Homeland Security, and USPTO. For the Taiwan, it included the Department of Justice, district prosecutors’ offices, Intellectual Property Court, Investigation Bureau, and TIPO. These agencies all attached much importance to the topics discussed at the seminar.
Celebrations were held for the World IP Day and the Patent Attorney DayApril 26 is the World Intellectual Property Day. Since 2001, many countries in the world have held celebrations for this day in ways that are close to daily life, based on its theme of the year. This has allowed people to learn more about innovations, environmental protection and IPR, as well as to show respect. “Reach for Gold: IP and Sports” is the theme of the World Intellectual Property Day in 2019.To celebrate the World IP Day with the rest of the world, TIPO held a promotional talk on April 25 at the Taipei Arena. Since the Patent Attorney Day is on April 26, TIPO jointly worked with the Taiwan Patent Attorneys Association and The Motion Picture Association of America to celebrate the two days together. Representatives from the sports industry were invited to give speeches on the influence and importance of intellectual property protection for R&D and manufacturing in the sports industry, as well as for sports players. Nearly 150 people took part in the fun talks where IP awareness was also promoted.
Registration for the invention competition of the 2019 Taiwan Innotech Expo from April 19 to June 30The 2019 Taiwan Innotech Expo will be held from September 26 to 29 at Exhibition Hall 1, Taipei World Trade Center. Registration for an invention competition began on April 19. Interested companies and inventors are encouraged to register soon, to grasp this wonderful chance of displaying new inventions.In continuation of the three themes of 2018 - Future Technology, Innovative Inventions, and Sustainable Development, this year, three main exhibitions will be there to showcase the R&D results attained by the responsible ministries of Taiwan. Also, renowned overseas R&D organizations will partake in technological exchange with Taiwan’s professionals. The goal is to generate more chances of international cooperation, as well as business opportunities.
TIPO’s Q1 2019 IPR Statistics ReportIn Q1 2019, TIPO received a total of 17,243 applications for invention, utility model and design patents, a 2% decrease from the same period of last year. Of these, design patent applications grew for three consecutive quarters. Applications for trademark registrations (19,475 cases) were down by 4%. The numbers of invention patent applications filed by domestic applicants remained stable, while design patent applications filed by non-residents saw huge growth. Among domestic applicants, AU OPTRONICS filed the most invention patent applications and Alibaba, in terms of foreign applicants, topped the list.PatentInvention patents (11,303 cases) and utility model patents (3,956 cases) were down by 1% and 8% respectively, while design patents (1,984 cases) were up by 2%, a growth for three consecutive quarters (Table 1).Of residents’ applications, the number of invention patents (4,067 cases) remained stable. Both the numbers of utility model patents (3,689 cases) and design patents (940 cases) fell (Table 1). As to non-residents, the numbers of invention patents (7,236 cases) and utility model patents (267 cases) were down, while that of design patents (1,044 cases) was up by 18% (Table 1). The number of design patent applications grew rapidly mainly due to an increase in French, Japan and US applications (Figure 1), indicating the protection for product appearance is being emphasized much more by non-residents in the Taiwan market.Both the number of invention patent applications filed by domestic enterprises and their ratio to domestic invention patent applications grew over the same period last year. AU OPTRONICS topped the list with 187 cases. TSMC (163 cases) and ACER (96 cases) stood at the second and the third spot respectively. The top three enterprises saw a huge growth between 23% and 68% (Figure 2).Invention patent applications filed by domestic colleges and research institutions were both down over the same period.Looking at a breakdown by nationality of non-residents, Japan topped the list with 3,669 cases of invention patent applications (Figure 1). Among the largest filing companies, ALIBABA came on top with 267 cases and outperformed others by a year-on-year increase of 251% in this period (Figure 2).TrademarkThe number of new applications for trademark registration (19,475 cases) in Q1 2019 decreased by 4% from the same period of last year. Applications filed by residents (14,004 cases) and non-residents (5,471 cases) were down by 2% and 8% respectively (Table 1). Applications filed by major countries, such as Japan and the US, saw a decline resulting in a larger decrease of non-residents’ applications (Figure 1).As to non-residents, mainland China stayed on top with 1,331 cases, followed by Japan (1,102 cases) and the US (879 cases). Applications filed by the top five filing countries (regions) primarily are in Asia, indicating their aggressive portfolio of trademark registration in Taiwan (Figure 3).
Feel free to utilize our “Recommendations to Taiwan Financial Institutions on Patent Portfolio Management” reportLast year (2018), TIPO released a research report entitled FinTech Patent and Related Core Technologies Trends. The research results show that the patent applications filed by local financial institutions only account for 7% of the total FinTech patent applications in Taiwan. This shows that the patent portfolios of financial institutions’ FinTech are still fresh with room for development, as compared with those of other companies.In hopes of providing references on R&D and patent portfolios for Taiwan’s financial institutions, this study goes on to take Taiwan’s financial institutions as the subject matters to analyze the patent application trends, while comparing such with the technological development trends in the global FinTech community.As FinTech patents involve both information technology and non-technological business activities, it is not easy to write such patent documents. Therefore, the patentability of FinTech patents has been widely discussed by practitioners. This study further analyzes the approvals and disapprovals rendered to Taiwan’s financial institutions, hoping to delve into the cores of problems and present them to financial institution personnel. This may help to improve patent quality and shorten disposal pendency.
Public consultation meeting on simplifying administrative remedy procedures and the adversary system for patents and trademarks was a successIn accordance with global law-enforcement trends, Taiwan has continued to review whether the current IPR protection system is comprehensive enough. The Intellectual Property Court has thus been established to make it more professional and efficient for judicial authorities to handle IP-related cases. Taking references from Japan, USA, South Korea, and Mainland China’s experiences, the government also plans to make administrative remedy procedures more succinct.At this initial stage, TIPO plans to set up a specific examination unit to handle further patent and trademark reviews and disputable cases. As to the persons involved in the disputes, if disagreeing with resolutions, they may file a lawsuit against the procedural counterpart at the Intellectual Property Court. TIPO hopes to increase judicial economy by bringing the two most relevant stakeholders before the court.On February 25, TIPO convened a public consultation meeting to discuss relevant topics. The persons in attendance included representatives of the Judicial Yuan, Intellectual Property Court, and MOEA, as well as experts, scholars, and industry professionals. The attendants all exchanged ideas zealously, and they mostly saw relevant policies positively. The attendants also contributed thoughts on practical details such as how the procedures might be implemented.
The 2019 EU-Taiwan Seminar on Geographical IndicationsTIPO and the European Economic and Trade Office (EETO) held the 2019 Taiwan-EU Geographic Indications Seminar on March 20 together. The conference featured presentations by experts from both the EU and Taiwan, including Ms. Natalie Nathon, International Relations Officer, Dir A — International, DG AGRI, European Commission; Mr. Benedetto Francesco Ballatore, Inspector and Policy Official of the Italian Ministry of agricultural food forestry and tourism policy (Mipaaft)- ICQRF department; Ms. Virginie Dessimiroff, Legal Director of the BNIC (Bureau National Interprofessionnel du Cognac); Mr. Guo-Chi Lee, Section Chief, Council of Agriculture, Executive Yuan; Mr. Chi-Fan Liu, Township Mayor, Yuchih Township Office, Nantou Country; and Mr. Ho-Hsia, Trademark Examiner of TIPO. After the seminar, a GI product-tasting session was held, to help the attendants learn about the quality and characteristics of GI products. The seminar drew more than 150 industry, government and academia representatives from Taiwan and Europe, and the attendants all exchanged ideas zealously.To protect the products that are of strong regional features, the global community has developed geographical indications. Both the EU’s GI and Taiwan’s geographical certification marks and geographical collective trademarks are set to protect products which possess unique agricultural features and which are made through special production skills. TIPO and EETO hoped to increase both sides’ understanding of GI protection laws and practices, while deepening the public’s understanding of GI and certification marks, thereby facilitating promotion of Taiwan’s high-quality farm produce.
Celebration events for the 2019 World IP DayAs society advances and economy grows, people now have more time and money to take part in sports. This has facilitated the development of the sports industry. The 21st Century especially sees the frequent occurrence of sports events, and in response, the World Intellectual Property Day takes “Reach for Gold: IP and Sports” as a theme for year 2019, encouraging all countries to hold relevant activities in ways that are close to daily life, helping people to understand how IP can help the sports industry to grow.Accordingly, TIPO and Taiwan Patent Attorneys Association will hold a forum on April 25 at Taipei Arena. Government and industry representatives will share their insights on the importance of IP protection for the R&D of sports and sports-related goods and services, as well as how to create profits for sports players through IP protection. The forum is expected to bring new knowledge to Taiwan’s sports developments through expert viewpoints, thereby facilitating industry growth.TIPO will also hold a series of information sessions on patent, trademark, copyright, and trade secret protection to increase people’s awareness of IPR protection, establish a high-quality IPR environment in Taiwan, and generate endless R&D energy within the country, all through exchange of information.More information
Please feel free to attend the public hearing for the amendment draft of the Copyright Collective Management Organization ActSince the Copyright Collective Management Organization Act came into force on February 10, 2010, a number of operational problems have been found. Thus, on May 3, 2019, TIPO will hold a public hearing for the amendment draft of the Copyright Collective Management Organization Act. It is hoped that by collecting and understanding people’s views on its initial amendment draft, the collective management system in Taiwan will be able to operate more smoothly.The topics discussed at the hearing include the certification and truthfulness of the founders of collective management organizations which are in the middle of registration, internal regulations of collective management organizations and the counseling and monitoring of competent authority, as well as distribution of the acquisition and use of remuneration and revelation of business and financial information.
Registration starts now for the 2019 Advocacy Event for the Examination Guidelines on Unity of Invention as well as on Biology-related Invention Patent ApplicationsOn May 7, 9, 10, 14 and 15, in Taipei, Tainan, Kaohsiung, Hsinchu and Taichung respectively, TIPO will hold the 2019 Advocacy Event for the Examination Guidelines on Unity of Invention as well as on Biology-related Invention Patent Applications.The subjects of the event include the “Examination Guidelines on Unity of Invention” and “amendment introduction of the Examination Guidelines and examination practices on Biology-related Invention Patent Applications.” Patent examiners will give an explanation of the points for implementing amendment made this year (2019). All members of society are encouraged to take part.
Registration for the 2019 Seminar on Reasonable Confidentiality Measures for Trade Secrets starts nowTo assist businesses in establishing reasonable confidentiality measures so as to protect trade secrets while ensuring a competitive advantage, TIPO and the Taiwan Association for Trade Secrets Protection (TTSP) hold three seminars on appropriate confidentiality measures in Taipei (Feb 26), Taichung (March 8), and Tainan (April 3). Industry experts and judicial officers are invited to talk about topics such as strategies for establishing reasonable trade secret measures, mechanism for protecting information technology security, and investigation practices for trade secret cases. By so doing, TIPO hopes to assist business in establishing an effective system to protect trade secrets and to develop their counter strategies for possible damages in the future. All members of the public are cordially invited to take part.
Registration for the 2019 Information Session on Trademark Laws starts nowOn April 9, 16, 11, and 12, in Taipei, Taichung, Tainan and Kaohsiung, TIPO will hold the 2019 Information Session on Trademark Laws. All members of the public are encouraged to take part.A highlight of the session this year is the introduction to the latest guidelines of the formality check and the practice of substantial examination of trademark applications. This includes the introduction to relevant laws and regulations for examination guidelines and relevant cases. Through this session, TIPO expects to help attendants to have better understanding of things that should be noted, thereby protecting rights more thoroughly.
Registration for the 2019 EU-Taiwan Seminar on Geographical Indications starts nowTo promote geographical indications systems in the European Union(EU) and the geographical certification mark and geographical collective trademark system in Taiwan (hereafter geographical marks), as well as to enhance the businesses and consumers’ understanding of related practices, TIPO and the European Economic and Trade Office (EETO) will hold the 2019 EU-Taiwan Seminar on Geographical Indications on March 20 at the Plenary Hall of the GIS MOTC Convention Center in Taipei.At the seminar, the latest developments in geographical marks will be introduced, and rights holders will share their experiences in protecting geographical marks. Those who are interested in these topics and specific farm produce are encouraged to take part.
TIPO Statistics Report: Patent and Trademark Applications in 2018In 2018, overall patent applications slightly decreased by 1% to 73,421 cases. Invention patent applications grew by 3% for the second successive year, in which both residents (18,365 cases) and non-residents (29,064 cases) rose by 1% and 4% respectively. On the other hand, 84,816 cases of trademark applications were filed, hitting an 18-year high. As to examination efficiency, the average first office action pendency was shortened to below 9 months for invention patent applications and to 5 months for trademark applications respectively; pending patent and trademark applications were both lowered to about 46,000 cases.Breakdown by nationality, overall patent applications filed by residents (39,278 cases) declined by 4% in 2018, while those filed by non-residents (34,143 cases) went up by 4%. For the applications filed by residents, invention patents (18,365 cases) increased by 1%, while design patents (4,252 cases) and utility models (16,661 cases) dropped by 1% and 9% respectively. As for non-residents, applications filed for invention patent (29,064 cases) and utility model patent (1,249 cases) both grew by 4%, but design patents (3,830 cases) remained stable (Fig. 2, Table 1).In the patent applications by residents, increasing invention patent applications mainly came from a 3% rise by industries and schools, in which large enterprises and small and midsize enterprises (SME) went up by 2% and 8% respectively. However, the fall of design patent filings was due to a 15% drop in individuals. For the slip of utility model applications, industries, schools, research institutes and individuals all went down by 7-13% respectively (Fig. 3).Among the top 5 patent-filing countries (regions) in Taiwan, Japan continued to claim the top with 14,169 overall applications, followed by the US (7,345 cases) and Mainland China (3,506 cases). Japan also took the lead 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 (84,816 cases) hit a record high in 18 years due mainly to the surge of non-resident applications. By nationality, applications filed by residents (59,840 cases) dropped by 2%, while non-residents (24,976 cases) soared by 11% (Fig. 5, Table 1).Among the top 5 trademark filing countries (regions), Mainland China (5,770 cases, +19%) again took the lead, followed by Japan (4,728 cases, +21%) and the US (4,187 cases, +14%). In addition, four out of top five trademark filing countries (regions) were in Asia, showing their aspirations of trademark portfolios in Taiwan (Fig. 6).In the face of increasing numbers of invention patent and trademark applications, TIPO is devoted to examination and management of processing time. Furthermore, various fast-track patent examination measures and PPH programs with other IP offices have been launched. As a result, the average first office action pendency was less than 9 months for invention patent applications and 5 months for trademark applications respectively, both reaching a 10-year low. Meanwhile, the numbers of pending applications for both patent and trademark applications were lowered to about 46,000 cases (Fig. 7, Fig. 8).
TIPO’s Q4 2018 IPR Statistics ReportIn Q4 2018, TIPO received a total of 19,800 applications for invention, utility model, and design patents, a 2% increase from the same period of last year. Of these, invention patent applications grew for eight consecutive quarters. Applications for trademark registrations (21,600 cases) also grew by 2%. The numbers of invention patent applications filed by domestic and foreign applicants and trademark applications filed by foreign applicants respectively reached all-time high since 2014, 2013, and 2011. Among domestic applicants, TSMC filed the most invention patent applications. As to foreign applicants, Alibaba Group Services topped the list.PatentInvention patent applications (13,200 cases) increased by 5%, a growth for eight consecutive quarters (Table 1 and 2). Design patents (2,003 cases) grew by 2%. Utility model patents stood at 4,597 cases, a 7% drop from the same period of last year (Table 1).Of residents’ applications, 5,511 cases were filed for invention patents, registering a small increase from the applications of enterprises and colleges. However, utility model applications (4,315 cases) and design applications (951 cases) fell (Table 1).Invention patent applications filed by domestic enterprises and their ratio to domestic invention patent applications grew over the same period. The TSMC once again led by 296 cases. ITRI (274 cases) and AU OPTRONICS (187 cases) stood at the second and third spot respectively (Figure 2). AU OPTRONICS accounted for a huge growth of 95% with the highest growth among the top 10 enterprises and the most cases ever since 2012.Invention patent applications filed by domestic colleges and their ratio to domestic invention patent applications grew over the same period. Conversely, applications by research institutions and their ratio to domestic invention patent applications decreased.Of non-residents’ applications, invention patent applications (7,689 cases) and design patent applications (1,052 cases) grew by 7% and 20% respectively while applications for utility model (282 cases) decreased (Table 1). Design patent applications grew mainly because of the huge growth (+46~525%) in the number of applications filed by the US, mainland China and France. Utility model applications filed by major countries saw decline (Figure 1).By nationality of foreign applicants, Japan topped the list with 3,240 invention patent applications (Figure 1). Among the largest filing companies, ALIBABA GROUP SERVICES came on top with 254 cases and outperformed others by an increase of 121% in this period (Figure 2). TrademarkThe number of new applications for trademark registration (21,600 cases) in Q4 2018 increased by 2% from the same period of last year (Table 1). Applications filed by residents (15,160 cases) and non-residents (6,440 cases) were up slightly. Applications filed by non-residents grew for seven consecutive quarters (Table 2), mainly due to positive growth of mainland China, Japan and US in past quarters. Among foreign applicants, mainland China stayed on top with 1,506 cases, followed by Japan (1,322 cases) and the US (1,013 cases). Applications filed by the top five filing countries (regions) primarily are in Asia. Japan accounted for a growth of 23% (Figure 1).
TIPO completes analytical reports on IPR regimes in Southeast Asian and South Asian countriesTo assist businesses in learning more about the IPR regimes and practices in the major countries listed in the New Southbound Policy, TIPO recently collected information on the IPR regimes, practices, registration, and related procedures in question of six countries – the Philippines, Malaysia, Indonesia, India, Vietnam and Thailand. TIPO has also written two analytical reports, “Trademark Systems and Developments in Southeast Asian Countries” and “Patent Systems and Developments in Southeast Asian Countries,” for companies to take further references when setting their southbound IP strategies. The aforementioned information and reports have been released on the “IPR Protection in Southeast Asian and South Asian Countries” of the TIPO website. All members of the public are cordially invited to browse the documents.More information
TIPO releases patent and trademark statistics and Top 100 patent applicants in 2018In 2018, TIPO received 47,429 applications for invention patents, an annual increase of 3% and a second-year consecutive growth; 8,082 applications for design patents, which are just about the same from last year, and 17,910 for utility models, making a drop of 8%.By citizenship of applicants, Taiwanese nationals filed 39,278 applications, marking a 4% year-on-year decrease; while foreigners filed 34,143 ones, a 4% increase compared to the previous year. As to Taiwanese nationals, there were 18,365 applications for invention patents, marking a 1% increase. Also, there were 4,252 applications and 16,661 applications for design patents and utility patents, representing a 1% and a 9% decrease respectively. Japan topped the list with 14,169 applications, followed by the US (7,345) and mainland China (3,506).Among the top 100 patent corporate applications, the Taiwan Semiconductor Manufacturing Co. has topped the list for three years. The number of its applications has been growing since 2015, breaking a record-high in 2018. AU Optronics Corp. secures the second place with 586 applications. As to foreign companies, Qualcomm championed with 1,011 applications. This is not only a 67% year-on-year increase for the company but also marks the most significant growth among the top 10 patent corporate applicants. Alibaba Group Holding Limited withdrew to the second place with 599 applications. Looking at the structure of the top 100 patent applicants, corporates provide the main momentum in R&D. The numbers of applications for invention patents, utility patents, and design patents have all increased, at 2%, 7%,and 53% annually. As to academia, their numbers of applications for invention and design patents have also grown, at 5% and 26% annually, although that of utility patents decreased by 2%. For research insititutions, the application numbers for invention patents decreased by 5%. In terms of trademarks, TIPO received 84,816 applications, marking a 1% year-on-year increase – the highest in 18 years. Taiwanese nationals filed 59,840 applications, just 2% less than the previous year. Foreign nationals filed 24,976 applications, 11% more than the previous year. The three main countries of application are: mainland China (5,770 applications, 19% more than the previous year) which steadily remains at the top, Japan (4,728 applications, 21% more than the previous year), and the US (4,187 applications, 14% more than the previous year). In addition, TIPO has acquired significant results in accelerated examination. On average, it took 9 months for an applicant to receive an Office Action (OA) and 14 months to receive examination results of an invention patent case in 2018. As to trademarks, the time periods were respectively 5 months and 7 months. Both the numbers of invention patent and trademark applications pendency were lowered to roughly 46,000. This shows that TIPO has effectively assisted applicants and companies in their patent portfolio layouts.
TIPO amended the Examination Guidelines on Unity of Invention which entered into force on January 1, 2019In response to the revision of examination practices for unity of invention, TIPO amended the Examination Guidelines on Unity of Invention which entered into force on January 1, 2019. By doing so, TIPO hopes to assist applicants in understanding more about the examination for unity of invention. The key revisions of the amendment include the steps in determining unity of invention and clearly stipulated that, in principle, at least ONE independent claim (usually independent claim 1) as well as claims dependent on the independent claim shall be searched and examined if an application doesn’t meet the unity of invention requirement.More information
TIPO amended the Examination Guidelines on Biology-related Invention Patent Applications which entered into force on January 1, 2019To align with the status of development of Taiwan’s biotech industry, TIPO amended the Examination Guidelines on Biology-related Invention Patent Applications which entered into force on January 1, 2019. It is aimed to assist applicants in making determination of inventive step of invention patent applications much clearer and easily. This amendment focuses on rearranging the structure of certain chapters, revising specific types and discourse of inventive step, as well as adding sample cases.More information