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: Ray Hsu
Consultants: Jennifer Lin / Joyce I. Ho/ Jeanne Wang
Patent and trademark applicants may request reinstatement of the application if a failure to meet the statutory time period is caused by the COVID-19 pandemic
TIPO announced on January 31, 2020 that in the event that a patent or trademark applicant fails to comply with the statutory time period due to the COVID-19 pandemic, the applicant may file a request for reinstatement of the application together with the relevant documentary evidence. An applicant may request reinstatement of the application 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, as the case may be when a failure to meet the statutory time period is caused by natural calamity or other causes not attributable to the applicant of a trademark or patent application. In principle, TIPO will consider the requests with leniency on a case-by-case basis. As for the time period designated by examiner, TIPO announced on May 4, 2020 that TIPO in general will allow a one-month extension of time upon the applicant’s request with reasons and proofs enclosed, which may be further extended subject to TIPO’s discretion. (Ray Hsu, Esq.)
TIPO published the Patent Application Trend of Q4 2019
In the fourth quarter of 2019, a total of 20,141 patent applications (a 2% increase compared to the same period last year) were filed with the TIPO, of which 11,010 (invention patent: 5,506, utility model patent: 4,288, design patent: 1,216) were by domestic applicants and 9,131 (invention patent: 7,726, utility model patent: 340, design patent: 1,065) were by foreign applicants. The design patent applications increased 14%, which is the main reason for the growth in the fourth quarter.
As for the invention patent applications, the statistics based upon the applicant’s region is as follows: (1) domestic juridical persons: the top three were TSMC (371), Industrial Technology Research Institute (240) and Acer Incorporated (168); (2) domestic colleges: the top three were Far East University (38), Central University (25) and Cheng Kung University (22); (3) domestic research institutions: the top three were Industrial Technology Research Institute (240), Metal Industries Research & Development Centre (68) and Institute for Information Industry (38); (4) foreign juridical persons: the top three were Applied Materials (178), Qualcomm (128) and Tokyo Electron Limited (121). The statistics reveal that the top three applicants by the applicant’s nationality are (1) invention patent: Japan (3,293), U.S.A. (1,692) and China (764); (2) utility model patent: China (178), U.S.A. (45) and Hong Kong (34); (3) design patent: Japan (326), U.S.A. (271) and China (98). (Jimmy Wu, Patent Department)
TIPO published the statistics of the Accelerated Examination Program (AEP) for Invention Patents and the statistics of the Patent Prosecution Highway (PPH) as of February 2020
As of the end of February 2020, there were 133 patent applications filed under the AEP, of which 34 were filed by domestic applicants and 99 were by foreign applicants. The top four foreign applicants by nationality were: Hong Kong (75), Japan (12), U.S.A. (6) and Denmark (3). Among the 133 patent applications, 99 applications were filed under Category 1 (i.e., the corresponding application had 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 34.5 days. 2 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 158.5 days. 26 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 78.8 days. 6 applications were filed under Category 4 (i.e., inventions are related to green technologies), and the first office action therein was issued in 19.5 days.
As of the end of February 2020, there were 69 patent applications filed under the Taiwan-U.S. PPH; 87 applications filed under the Taiwan-Japan PPH; the first office action in those matters was issued in an average time of 58.1 days. No application was filed under the Taiwan-Korea PPH, Taiwan-Spain PPH, Taiwan-Poland PPH or Taiwan-Canada PPH. (Lanya Chiu, Patent Department)
TIPO’s Q4 2019 IPR Statistics Report (Trademark Applications)
The number of the new applications for trademark registration (22,533 cases) in 2019 Q4 reached a record high since 2003. Applications filed by domestic residents (16,233 cases) increased 7% while non-residents’ applications (6,300 cases) decreased 2%. Applications by domestic residents have grown in three consecutive quarters, from constituting 70% of all applications in Q4 2017 to 72% in the current quarter. Breakdown by nationality of the applicants, China led with 1,395 cases, followed by Japan (1,264 cases) and the U.S.A. (882 cases); and of the top five, the numbers of application by applicants from China, Japan and the U.S.A. decreased, while those of Korea and Hong Kong increased 43% and 22%, respectively. (Kevin Wei, Trademark Department)
TIPO Statistics Report: Trademark Applications in 2019
The number of trademark applications in 2019 (86,794 cases) hits a record high in 19 years, due mainly to a 3% increase of applications by domestic residents (61,928 cases). Applicants by non-residents (24,866 cases) remained relatively the same as the previous year. Of the top 5 trademark applications by applicant’s nationality (regions), China (6,108 cases) ranked first, followed by Japan (4,748 cases) and the U.S.A. (3,621 cases). Applications filed by Korea (1,668 cases) China were up by 16% and 6%, respectively, while those by Japan remained relatively unchanged from the previous year.
Of the trademark applications by domestic residents in terms of designation of goods/services, 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 associated with the top 5 popular classes of goods/services all saw a growth of 2%-6%. Among the domestic applicants, UNI-PRESIDENT had the most applications (432 cases), followed by TAICHUNG CITY GOVERNMENT (360 cases). Of the 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); among them, HUAWEI led with 166 cases, followed by LINE with 138 cases. (Kevin Wei, Trademark Department)
A technical manual of the product is an eligible prior art even if the parties to the sales signed a nondisclosure agreement (“NDA”) for the transaction
In the Supreme Administrative Court’s judgement 109-Pan-Zi No. 28, the Supreme Administrative Court held that a technical manual can be an admissible prior art to challenge the validity of the patent, so long as the extent of the disclosure in the manual over the structural features of the reticle pod was sufficient for understanding the art even if the parties to such a sales transaction normally signed an NDA for the transaction. The Court reasoned that the technical manual in question was already placed in the public domain because the product manufacturer had sold the product to non-specific parties, and that the NDA merely required non-disclosure of the technology set forth in the technical manual, rather than meaning to prevent the purchaser from knowing the technology. According to the decision, once the content of the technical manual was known to the public, the technology had satisfied the element of in public use on sale. The Court concluded that in the instant case, the technology contents of the technical manual had been disclosed through sale of the product, and the technical manual in question had become a subject of transaction available to any non-specific person prior to the priority date of the claimed invention, putting the technology in the status of being known to the public and rendering such evidence admissible. (Ray Su, Patent Attorney, Patent Department)
The scope of patent should be defined in accordance with the intrinsic evidence cited in the patent prosecution history
In this case, the plaintiff filed a complaint asserting that the defendant infringed his invention patent No. I357823 titled “Solid Dosage Forms of Combination Medicine for Treating Cardiovascular Disorders” (the “Patent”). Claim 1 of the Patent comprises the technical feature of “mixing the active ingredients homogeneously”, while the alleged infringing drug is a bi-layered tablet with a clear boundary between the active ingredients. In the Civil Judgement 107-Min-Zhu-Su-Zi-No. 26, the IP Court ruled that the Patent should be interpreted as comprising only the technical feature of “mixing the active ingredients homogeneously”, given that the Patent was granted based upon such patentee’s statement in the prosecution history. The IP Court noted that during the patent prosecution, the patentee stated that the claimed invention was different from the prior art, where physical separation should be maintained (e.g. bi-layered tablet) and that in the solid dosage form of the Patent, the contained active ingredients homogeneously mix and stably coexisted with each other so that there was no need to adopt a design that separated the active ingredients from each other. Accordingly, the Court found that the scopes of the invention patent should still be limited by the intrinsic evidence even if the Patent also includes an example of a bi-layered tablet. (Sylvia Hong, Patent Attorney, Patent Department)
Inventive step may be examined in accordance with the Patent Examination Guidelines in effect after the patent was approved.
The IP Court indicated in its Administrative Judgement 106-Sing-Chua-Su-Zi No. 41 that Paragraph 3 of Article 71 of the Patent Act “[w]ith respect to the ground(s) upon which an invalidation action is based and filed against an invention patent, the provisions in effect at the time of the said patent being approved shall govern” and the term “provisions” there refer to the relevant provisions of the “Patent Act”, not the Patent Examination Guidelines. When there is no substantial change of the examination of inventive step between the current Patent Act and the Patent Act in effect when the patent was approved, inventive step may be examined in accordance with the current Patent Examination Guidelines even though it was amended after the patent was approved and supplemented new content. (Howard Lee, Patent Department)
Kawasaki Jukogyo Kabushiki Kaisha’s “KAWASAKI” mark was held to be a well-known trademark. The application for registration of an identically worded mark “KAWASAKI” on “batteries”, etc. was denied on the ground of likely to cause confusion to the relevant consumers.
In the administrative judgment No. 108-Sing-Shan-Su-Zi-No. 90, the IP Court found that Kawasaki Jukogyo Kabushiki Kaisha’s mark “KAWASAKI” had been a well-known trademark in the field of vehicles and mechanical apparatus worldwide as well as in Taiwan, bearing extremely high distinctiveness. Further, in 2010 Kawasaki Kaisha developed a battery power supply system, which was relevant to the “batteries, etc.” designated under the opposed mark. The plaintiff’s use of the identically worded “KAWASAKI” mark on battery products would likely cause confusion to the relevant consumers to believe that such products were originated from Kawasaki Kaisha. The Plaintiff asserted that it registered two marks “老爺KAWASAKI” and “KAWASAKI (with design)” on “batteries”, etc. as early as 1991 and had continued to use said marks through the present time; that Kawasaki Kaisha unsuccessfully petitioned to revoke the registration of said two marks’ and that the co-existence of both parties’ KAWASAKI marks for many years should be considered by the court. The IP Court, however, dismissed the plaintiff’s complaint, holding that the court must consider whether there existed any other reason to disallow the registration of the opposed mark, and that the denial of the prior petition for revocation of the registration should not be the sole basis to allow the registration of the opposed mark. (Jay You, Trademark Department)
The evidence of trademark use may support the trademark registration on the goods of same nature as the designed goods.
In the petition to vacate TIPO’s ruling of cancellation of “RING & Device” trademark registration No. 1098099, designated on the goods “computer hardware, computer software, calculating machines, cash registers” in Class 9, on the grounds of non-use, the MOEA found that when the registration of the mark at issue was applied for on Sep. 2, 2003, the designated goods were under Subclass 0917, group titled “computer hardware, computer software”, which covered more than one hundred items of goods, including “bar code printers”. The scope of the registration of the mark at issue should cover all items of goods under that Subclass at that time. Since the petitioner (registrant) in fact had used the mark at issued on “bar code printers”, it should be deemed that said mark was used on the goods of same nature as “computer hardware, computer software”. Hence, it was determined that the portion of TIPO’s decision which cancelled the registration of the mark at issue pertaining to “computer hardware, computer software” should be vacated. (Sandy Yu, Trademark Department)
Micron successfully obtained a guilty verdict for its criminal complaint against former employees for their misappropriation of trade secrets
Micron Technology, Inc. and its Taiwan subsidiary successfully obtain a guilty verdict in the Taichung District Court’s decision for its criminal complaint against five former employees for defendants’ misappropriation of trade secrets for disclosure and use in China, which sentenced all defendants for imprisonment ranging from 8 months to 2 years. The district court decision is now finalized after all defendants accepted the verdict without appeals. Tsar & Tsai represented Micron. (Jeanne Wang / Henry Chang / Jenny Sheu)
TIPO revoked a patent granted to DIC Corporation
Merck Patent GMBH (“Merck”) filed an invalidation petition with the TIPO on February 5, 2016 against DIC Corporation’s Invention Patent No. I452122 on the ground that the Patent lacked novelty and inventive step. During the review of the petition, DIC submitted several versions of the post-grant amendments, and a hearing was held therefor by TIPO on October 24, 2019. After four years, the TIPO finally ruled that the post-grant amendments should not be accepted and rendered the invalidation decision on February 25, 2020 finding the claims lacked novelty and inventive step, and fictionally lost novelty. Tsar & Tsai represented Merck in obtaining the favorable invalidation decision in this case. (Sylvia Hong/Wendy Chen/Ray Hsu)
Tsar & Tsai was ranked “HIGHLY RECOMMANDED” by the “Asialaw Leading Lawyers” in the field of Intellectual Property.
Our Partners were ranked by the “Asialaw Leading Lawyers” 2020 Edition in the field of Intellectual Property in Taiwan as follows: Jennifer Lin was recognized as an Elite practitioner, and Dr. Joyce I. Ho was recognized as a Distinguished practitioner.
Dr. Jeanne Wang was recognized by the “Leaders in Law 2020 Global Award” as the Intellectual Property Lawyer of the Year in Taiwan.
Tsar & Tsai was ranked by the “Legal 500 Asia Pacific 2020” as a “Taiwan Top-Tier Firm” in the field of Intellectual Property.
Jennifer Lin and Vincent Lin were recognized by the “Legal 500 Asia Pacific 2020” as Leading Lawyers in the field of Intellectual Property.
Tsar & Tsai was ranked by the “2020 Global Law Experts Annual Awards” as “Intellectual Property Law Firm of the Year in Taiwan – 2020”.
Tsar & Tsai was awarded by the “Asia IP” as Tier 1 law firm in the field of Copyright.
The “Benchmark Litigation Asia-Pacific 2020” has announced that Jennifer Lin and Dr. Joyce Ho were respectively named “Dispute resolution stars” in the field of Intellectual Property.
Jennifer Lin and Edgar Chen were recognized by the “Asia Business Law Journal” as “Taiwan’s Best Lawyer” in the field of Intellectual Property.