The contents of Tsar & Tsai IP News are not legal opinions and shall not be taken as legal advice on any particular issue or case. If the reader has any suggestions or questions, please do not hesitate to contact us.

Tsar & Tsai IP News is aimed at providing the readers and clients

  1. important recent changes in IP related laws and regulations in Taiwan,
  2. practical views and interpretations on IP related laws,
  3. important IP legal news and case developments, and
  4. information on recent IP related activities of Tsar & Tsai Law Firm. If you have any comments or questions, please feel free to contact us (Tel: 886-2-2781-4111; e-mail: patent@tsartsai.com.tw; TM@tsartsai.com.tw ).

Editors: George Shih / Jay You
Consultants: Jennifer Lin / Joyce I. Ho/ Jeanne Wang

The Intellectual Property Office (“TIPO”)  announced the statistics of Patent Prosecution Highway (“PPH”) during the period of 2019 July

By the end of July 2019, there were 2789 patent applications filed under the Taiwan-U.S. PPH (since September 2011); 3356 applications filed under the Taiwan-Japan PPH (since May 2012); 2 applications filed under the Taiwan-Spain PPH (since October 2013); 80 applications filed under the Taiwan-Korea PPH (since July 2015); and 2 applications filed under the Taiwan-Canada PPH (since February 2018).  TIPO issued the first office action for applications filed under PPH in an average of 47.5 days during the first seven months of 2019. (Tony Hsieh, Patent Department)

TIPO announced statistics for the Accelerated Examination Program (“AEP”) for Invention Patents during the period of July 2019

As of July of 2019, there were 174 patent applications filed under the AEP, of which 85 were filed by domestic applicants and 89 were by foreign applicants. The top four foreign applicants by nationality were: Japan (39); Germany (15); U.S.A. (15) and Hong Kong (4).

Among those applications, 93 were filed under Category 1 (i.e., the corresponding application has been approved by a foreign patent authority after substantive examination), and the first office action in those matters (including examination opinions and final decisions) was issued in an average of 43.2 days; 8 applications were filed under Category 2 (i.e., the EPO, JPO or USPTO has issued an office action during substantive examination but has yet to approve the application’s foreign counterpart), and the first office action therein was issued in an average of 14.5 days. 66 applications were filed under Category 3 (i.e., the invention application is essential to commercial exploitation), and the first office action therein was issued in an average of 79.4 days. 7 application was filed under Category 4 (i.e., inventions are related to green technologies), and the first office action therein was issued in 94.4 days. (Tony Hsieh, Patent Department)

TIPO announced the numbers of patent applications and the certificates issued in the first half of 2019

In the first half of 2019, TIPO received a total of 35,534 (+1%) applications for invention, utility model, and design patents.  According to TIPO, the number of design patent applications grew 10% compared to the same period last year.  Design patent applications filed by foreign applicants rose by 30% mainly due to a significant increase in applications by French applicants.  The top 3 enterprise applicants were: TSMC (429 cases), AU OPTRONICS (318 cases) and MEDIATEK (163 cases).  Domestic Small and Medium Enterprise’s (SMEs) invention patent applications saw an incremental growth for the third consecutive year (16% in the first half of 2019), indicating that the SMEs have gradually understood the importance of using patents to protect the achievements of R&D.  The top 3 patent applicants by nationality were: Japan (6,707 cases), U.S.A. (3,047 cases) and China (1,156 cases).  As to design patent, the top 3 applicants by nationality were: Japan (704 cases), U.S.A. (357 cases) and France (215 cases, a growth of 400%). (Charles Ma, Patent Department)

TIPO announced the amendment to Patent Act and it’s effective date

Amendments to the Patent Act were promulgated on May 1, 2019, and the Executive Yuan has decided that the amendment shell take effect on November 1, 2019. TIPO is now amending the Enforcement Rules of the Patent Act and the Guidelines for Substantive Examination of Patent, and will publish the amended regulations together when they are approved.  The highlights of the present Amendment include:

  1. The applicability scope and period of patent division after the application is extended.

  2. To enhance TIPO’s the examination efficiency of invalidation petitions, the time limit for when the petitioner must submit reasons for invalidation and evidence and the time period for the authority to review the petition and patentee to apply for post-grant amendments are revised.

  3. The period for applying for a post-grant amendment of utility model patent and the standard for TIPO’s review of the application are amended.

  4. The term of a design patent is extended from 12 to 15 years.

 (Charles Ma, Patent Department)

The Supreme Court affirmed that a Patentee’s right to recover damages for infringement should be after granting exclusive of the patent license

Pfizer Ireland Pharmaceuticals (“Pfizer Ireland”) is the patentee of the invention patent No. 083372 titled “Pharmaceutical composition for treatment or prevention of male erectile dysfunction or female sexual dysfunction” (the “Patent”). It filed a declaratory action to affirm its right to recover damages from Nang Kuang Pharmaceutical Co., Ltd. (“Nang Kuang”) for infringing the Patent which was exclusively licensed to Pfizer Pharmaceuticals Co. Ltd. (“Pfizer”).

The IP Court of the Second Instance held that although Pfizer Ireland could claim damages against Nang Kuang, Pfizer Ireland would need to prove damage and the amount of the damages. Since the Patent was exclusively licensed to Pfizer and it is not possible for Pfizer Ireland to license the same patent to another licensee, Pfizer Ireland should prove what damages it suffered from Nang Kuang’s infringement acts in Taiwan. The court ultimately dismissed Pfizer Ireland’s suit because it failed to prove damages.

The Supreme Court upheld the lower court judgment and emphasized that a patentee asserting the right to damages arising from infringement of its patent rights bears the burden of proving the damage it had sustained. Although the Patent Act has a provision relating to calculation of damages which somewhat reduces such burden, it does not exempt the patentee from the burden of proving the fact that it indeed suffered damages.  Pfizer Ireland’s appeal was dismissed and the judgment was therefore finalized. (Sylvia Hong, Patent Department)

The IP Court ruled that seller of a aftermarket headlights by producing and selling the products for repair and maintenance should be held liable for infringe the vehicle maker’s design patent

Daimler AG (“Daimler”), the German parent company of the auto manufacturer Mercedes-Benz, is the patentee of the design patent No. D128047 titled “Headlights for Vehicles” (the “Patent”). Depo Auto Parts Ind. Co., Ltd. (“Depo”) is a Taiwan company making and selling aftermarket headlights for use in auto repair and maintenance which carry a similar design to those used in the Mercedes-Benz vehicles. Daimler filed a patent infringement suit against Depo based on the Patent and requested damages and injunctive relief.  In defense, Depo asserted that Daimler violated the Fair Trade Act as well as the principle of good faith by refusing to license the Patent to Depo and suing Depo after making a promise to the German legislator in 2003 that it would not impede and interfere with the component suppliers in the secondary market in exchange for legislators’ not adding the “repair clause” in the German Design Act.  The IP Court of the First Instance rendered a judgment in favor of Daimler, holding that Daimler did not have the power of a monopoly in the relevant markets, that Daimler had a right not to license its patent by virtue of the principle of freedom of contract, and that the promise made by Daimler to German legislators in 2003 was political in nature and was not legally binding. (Roam Huang, Patent Department)

TIPO Trends in first half of 2019: Trademark Application Statistics

In the first half of 2019, a total of 41,986 applications for trademark registration were filed.  The number is not significantly different from that of the same period last year.  There were 29,957 applications filed by domestic applicants, a slight increase of 0.2%, and 12,029 applications filed by foreign applicants, a decrease of 2%.  In terms of the nationality of the applicants, China (mainland) ranked first with 2,958 applications (+8%), followed by Japan with 2,249 applications, and the U.S.A. with 1,828 applications. (Jay You, Trademark Department)

When the goods in use are different from the registered/designated goods and both are conceptually subordinated items, the effect of use of the mark on the former will not extend to the use on the latter

In the Administrative Judgement 107-Min-Shan-Su-Tzi No. 110, the IP Court held that Subparagraph 2 of Paragraph 1 of Article 63 of the Trademark Act should be applicable where the mark in dispute, “阿里山ALI SHAN”, had not been put into use on the designated “wheat wine” within the three year period prior to the filing date of the cancellation. The IP court found that the use evidence submitted by the plaintiff merely showed that the mark in dispute was used on “Kaoliang liquor (sorghum)” instead of “wheat wine”, and that the raw materials, manufacturing procedure, wine marketing strategy and promotion thereof were apparently different. In addition, both goods are categorized in the same classification and subgroup, and conceptually deemed the same products in equal level without a superordinate or subordinate relationship. The IP Court held that the use of the mark in dispute on “Kaoliang liquor (sorghum)” would not extend to “wheat wine”, and thus the IPO’s decision on cancellation of the registration of the mark in dispute was correct. (Singing Hsieh, Trademark Department)

TIPO concluded that the opposed mark “好師多 (Hao-Shi-Duo) & design” is highly similar to the well-known mark “好市多” (Hao-Shi-Duo) of Price Costco International, Inc. and is not registerable on its designated services in Class 35

Tsar & Tsai, assisted Price Costco International, Inc. (“PCII”), to successfully revoke the registration of the mark [好師多 (Hao-Shi-Duo) & design] (“the opposed mark”) registered by a Taiwanese company on the services “employment agencies, personnel management consultancy, computer database management, etc.” in Class 35 by citing PCII’s mark “好市多” (Hao-Shi-Duo) which has been well-known in the fields of retail and wholesale services in Taiwan.  TIPO found that the cited well-known mark “好市多” (Hao-Shi-Duo) had been widely used and was highly distinctive.  The marks of both parties were made up of the Chinese words ““.  Besides, the characters “” and “” contained in the marks respectively carried the same pronunciation although in different tones.  Thus the two marks were almost identical in pronunciation and highly similar to each other.  The opposed mark would likely cause confusion to the relevant consumers as to the provider of services rendered under the opposed mark.  Hence, the registration of the opposed mark “” was revoked based on Article 30-I-(11) of the Trademark Act. (Dr. Joyce Ho/Sandy Yu, Trademark Department)

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