Tsar & Tsai IP News is aimed at providing the readers and clients
- important recent changes in IP related laws and regulations in Taiwan,
- practical views and interpretations on IP related laws,
- important IP legal news and case developments, and
- 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: email@example.com; TM@tsartsai.com.tw ).
Editors: George Shih / Kevin Wei
Consultants: Jennifer Lin / Joyce I. Ho/ Jeanne Wang
TIPO announced the statistics of Patent Prosecution Highway (PPH) as of October 31, 2019
There were 122 patent applications filed under the Taiwan-U.S. PPH for the period from August to October 2019. Among them, 100 applications were filed under the Taiwan-Japan PPH; no application was filed under the Taiwan-Spain PPH, 9 applications were filed under the Taiwan-Korea PPH, and no application was filed under the Taiwan-Canada PPH. Through October 2019, the average time for issuing the first office action this year is 118.6 days (Tony Hsieh, Patent Department)
TIPO announced statistics for the Accelerated Examination Program (AEP) on Invention Patents during the period of October 2019
Through October 31, 2019, there were 247 patent applications filed this year under the AEP, of which 123 were filed by domestic applicants and 124 were by foreign applicants. The top four foreign applicants by nationality were: Japan (49), U.S.A. (24), Germany (17), and Sweden (5). Among the applications, 123 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 48.5 days; 13 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 39.6 days; 99 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 80.5 days; and 12 applications were filed under Category 4 (i.e., inventions are related to green technologies), and the first office action therein was issued in 76.6 days. (Tony Hsieh, Patent Department)
TIPO and JPO amended the PPH pilot program to a permanent PPH program
TIPO and JPO launched the PPH pilot program in May 2012. As of the end of September 2019, TIPO had received 3,426 requests for expedited examination. The pilot program remarkably sped up the examination process, and the first office action pendency has been reduced to 1.21 months in average, and the final disposition to 3.77 months in average, respectively. In the light of such an excellent performance, TIPO and JPO agreed to upgrade the PPH pilot program to a permanent program starting May 1, 2020. This permanent program will provide the Taiwanese and Japanese applicants with stable and convenient PPH services. (Charles Ma, Patent Department)
Taiwan and Japan Signing the MOUs on Design Patent Priority Document Exchange (PDX)
In 2013, Taiwan and Japan signed an MOU on PDX to facilitate electronic exchange of priority documents for invention and utility model patent applications. Since then, the PDX has been widely used by the applicants of both nations. For expanding the scope of electronic exchange, TIPO and JPO have decided to add the design patent priority documents to the program as well. It is estimated that the service will be officially launched in April 2021. (Charles Ma, Patent Department)
TIPO announced the Intellectual Property Trend of Q3 2019 re Patent Applications
In the third quarter of 2019, a total of 18,976 (a 4% increase compared to the same period last year) patent applications were filed with TIPO, of which 12,260 applications were for invention patent, 4,452 applications were for utility model patent, and 2,264 applications were for design patent; applications for each of such categories increased 2 to 4 percent compared to the same period last year. The top 3 domestic patent applicants by the number of applications filed were TSMC (533), AU OPTRONICS (120) and MEDIATEK (96), with TSMC (up 76%) registered the highest growth. The top 3 foreign patent applicants by the number of applications filed were Alibaba (315), Qualcomm (187), and Applied Materials (163). (Charles Ma, Patent Department)
Amendments to the Examination Guidelines for Pharmaceutical- Related Invention Patents Effective on January 1, 2020
TIPO amended the Examination Guidelines for Pharmaceutical-Related Invention Patents (the “Guidelines”), which will take effect on January 1, 2020. The highlights of the Guidelines include:
Adding the case explanations regarding “lack of support by the specification”, “novelty” and “inventive step”.
Adding an explanation item concerning whether a method simultaneously encompassing a therapeutic effect and a non-therapeutic effect belong to a statutory unpatentable method of treatment. If a therapeutic effect and a non-therapeutic effect produced by a claimed method are inevitably connected and indistinguishable or the non-therapeutic effect is only a result associated with the therapeutic effect, the claimed method belongs to a statutory unpatentable method of treatment. On the other hand, if the therapeutic effect is distinguishable from the non-therapeutic effect and the claim is clearly defined to refer to the non-therapeutic purpose, the claimed method does not belong to a statutory unpatentable method of treatment.
Amending the provisions regarding the writing manner for a Swiss type claim. In the event the technical features of a medical use invention involve dosing subjects, dosing regimens, routes, doses or time intervals, etc., these essential technical features should be defined in a Swiss type claim.
Adding the discussion on the lack of inventive step relating to hydrates. For a claimed invention relating to a hydrate of known compounds with specific numbers of water, basically it is devoid of an inventive step, unless the patent applicant can provide evidences showing that the claimed hydrate exhibits an unexpected effect or presents other arguments sufficient to prove that the claimed hydrate possesses an inventive step. (Wendy Chen, Patent Department)
The Supreme Administration Court held that in an administration litigation, a probability of damages must exist for a third party to be eligible for invention prescribed in Article 42 of the Administrative Litigation Act, and that a mere existence of a legal interest is insufficient for a third party to intervene.
The Supreme Administration Court held in its Judgment 108-Tsai-Tze No. 1385 that in a petition for revocation based upon the patent invalidation, the rights or legal interest of a third party who was neither the petitioner nor the patentee could not be directly damaged by the determination of the patent validity in the revocation litigation even if such third party had been sued by the patentee in a separate civil action for infringing upon the disputed patent. Thus, the Court held, said third party merely had a legal interest in the result of the revocation litigation and failed to meet the elements required for intervention prescribed by Article 42 of the Administrative Litigation Act. (Howard Lee, Patent Department)
TIPO Published Trademark Application Statistics for Q3 0f 2019
In the third quarter of 2019, a total of 22,275 trademarks were filed for registration, an increase of 6% compared to the same period last year. There were 15,738 applications filed by domestic applicants, an increase of 6%, and 6,537 applications by foreign applicants, an increase of 4%. In terms of the applicant’s nationality, China (mainland) ranked first with 1,755 applications (+15%), followed by Japan with 1,235 applications (+9%). However, number of the applications from the U.S., Korea and Hong Kong all decreased. (Jay You, Trademark Department)
The applicability of Paragraph 1-(8) of Article 30 of the Trademark Act should be based upon the appearance of the drawing and/or characters of the mark in a whole, its relevance to the designated goods or services and the actual market dealing thereof, and the knowledge or recognition of the consumers over the designated goods or services
In the Administrative Judgement 10 8-Xing-Shan-Su-Tze No. 31, the IP Court indicated that the mark in dispute, “Boy London”, was composed of two words instead of one single word “London” which represented a geographic name. Based on the appearance, notion or pronunciation of the mark in dispute, it was unlikely that the relevant consumers would misidentify the mark in dispute with “Boy from London” or “London”. In addition, the evidence submitted by the plaintiff showed that the mark in dispute had been used for many years and that all relevant consumers knew that “Boy London” was the trademark used on the goods manufactured and services provided by the plaintiff. As a matter of common sense, the relevant consumers should not mistakenly believe that the mark in dispute had an association with the United Kingdom or London, or that the place of origin of the goods or services was in relation to London. The IP court thus held that the registration of the mark in dispute did not violate Paragraph 1-(8) of Article 30 of the Trademark Act. The IP Court granted the plaintiff’s petition to revoke the dispositions by the TIPO and the MOEA’s decision and to direct the TIPO to accept the registration of the mark in dispute. (Singing Hsieh, Trademark Department)
The IP Court held that Aster Bikes Technology Co., Ltd. could not use the “FERRARI” trademark to manufacture, sell or promote products
In the IP Court’s decision dated October 1, 2019, Aster Bikes Technology Co., Ltd. (“Aster”) was the lawful licensee of the “FERRARI” trademark, but the scope of the license was limited to “bicycle frame” and clearly did not cover assembled “whole bicycle”. When marketing its bicycle products, however, Aster proclaimed that they were the co-branded bicycle licensed by FERRARI, failing to disclose that the license was limited to bicycle frame. The IP Court held it obvious causes confusion on consumers and constitutes infringement. The IP Court held that Aster could not use the “FERRARI” trademark to manufacture, sell or promote its bicycle products. (Alina Chai, Trademark Department)
The Supreme Administrative Court upheld the IP Court’s judgment which revoked the registration of the mark “SHACMAN” for use on the goods “land carriers, automobiles, land vehicle chassis, automobile bodies, etc.” in Class 12 on the ground that said mark was similar to the “MAN” trademark previously registered by Man Truck & Bus SE
Tsar & Tsai assisted Man Truck & Bus SE (“MAN”) to successfully revoke the registration of the mark “SHACMAN” (the “opposed mark”) by Shaanxi Heavy-Duty Automobile Co., Ltd. for use on the goods “land carriers, automobiles, land vehicle chassis, automobile bodies, etc.” in Class 12 by citing the “MAN” trademark previously registered by MAN. The IP Court found that the “MAN” mark had already been used and promoted in Taiwan for a long period of time and widely recognized by the relevant local consumers and enterprises; that the opposed mark was highly similar in appearance, pronunciation and concept to the “MAN” trademark, which was also designated for use on the goods “land carriers, automobiles, land vehicle chassis, automobile bodies, etc.” in Class 12; and that the relevant consumers could be misled to believe that the goods provided under the opposed mark were produced by MAN or MAN’s affiliates. As such, the IP Court held that the registration of the opposed mark should be revoked pursuant to Paragraph 1-(10) of Article 30 of the Trademark Act. The Supreme Administrative Court upheld the IP Court’s decision. (Dr. Joyce Ho / Sandy Yu)