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 / Thomas Liu
Consultants: Jennifer Lin / Joyce I. Ho/ Jeanne Wang
TIPO Trends in the First Half of 2020: Patent Statistics
In the first half of 2020, a total of 33,954 patent applications (down 4% compared with the same period last year) were filed with the TIPO, where 21,911 were for invention patent (down 4%), 8,327 were for utility model patent (down 2%), and 3,716 were for design patent (down 13%). Sorted by the applicant’s nationality, 18,253 applications were filed by domestic applicants (down 1%) and 15,701 were by foreign applicants (down 8%); among those applications, 6,638 were filed by applicants from Japan, 3,521 were from the U.S., 1,638 were from China, 696 were from South Korea and 544 were from Germany. (Jimmy Wu, Patent Department)
TIPO promulgated the amendment to Part IV “Examination for Utility Model Patent” of the Patent Examination Guidelines
TIPO promulgated the amendment to Part IV “Examination for Utility Model Patent” of the Patent Examination Guidelines, effective August 1, 2020. Part IV of the amended Guidelines was renamed “Examination of Utility Model Patent”, and a new Chapter 3 “Technical Evaluation Report for Utility Model Patent” was added to Part IV, setting relevant rules for the applicants, compliance and unifying handling principles for the examiners to follow. The new guidelines cover the following aspects:
The regulations of requesting the technical evaluation report for a utility model patent, including the applicants who can be any person, and the time period therefor that the request can be made after the utility model patent is published and after the utility model patent has become extinguished, and the claim by non-patentee on the utility model patent involving the commercial implementation.
The items to be examined on the technical evaluation report, including novelty, fictitious novelty, inventive step and first-to-file principle.
The technical evaluation report should include the searched objects (each claim within the application on the latest published version) and the searched scope (the printed publications which have been published or become public prior to the filing date (or the priority date in the event priority is claimed), and the provide information on invention patent or the utility model patent filed as of such date.
The patentee should be notified by a “Notice of Cited References of Technical Evaluation Report” for further explanations if any of the claims is considered lacking the required elements such as novelty and/or inventive step.
Examiners should attend to the following: whether there is post-grant amendment or invalidation petition pending before the patent authority; the prior arts which were cited during examination in denying the invention patent application filed as of the same date should be referenced if there exists “two applications for one subject”; if the comparison code of the claims is 1-5 in the first requested technical evaluation report for utility model patent and the comparison code of the same claims is also 1-5 in the later requested technical evaluation report for utility model patent, a further “Notice of Cited References of Technical Evaluation Report” should be sent to request the patentee to submit explanation; the patentee should be notified if the party requesting the technical evaluation report for utility model patent is not the patentee. (Jimmy Wu, Patent Department)
TIPO promulgated the “Operational Directions for the Processing of Third-Party Observations on Invention Patent Applications”
TIPO promulgated the “Operational Directions for the Processing of Third-Party Observations on Invention Patent Applications” (“Operational Direction”), which became effective September 1, 2020. The Operational Directions, which regulates the time period and the basis on the submission of the third-party observation, is established to improve the third-party observation system for public participation in the patent examination process. The third-party observations may be submitted before a decision is rendered if the invention patent application is considered in violation of Article 46 of the Taiwan Patent Act. Further, the following principles should be adhered when processing the third-party observations: (1) In the event of “two applications for one subject”, the third-party may refer to the application number of the published corresponding utility model patent application instead of the number of the invention patent application;(2) the third-party observation will not be processed if it is not clear and specific, clearly unidentifiable, or irrelevant to the application; the patentee of the invention patent application should be notified when a third-party observation is served; and (3) the third party need not be notified of the result of examination of the third party observation. (Jimmy Wu, Patent Department)
TIPO promulgated the amendment to Part III “Substantive Examination for Design Patent” of the Patent Examination Guidelines
TIPO promulgated the amendment to Part III “Substantive Examination for Design Patent” of the Patent Examination Guidelines, which became effective November 1, 2020. The highlights of the amendment include:
Relaxing the disclosure requirements of the specification and drawings: If some parts are the design not disclosed in the drawings, the parts will in principle be deemed “parts not to be claimed” and it is no longer required to state the reason for omission in the description of design;
Confirming that the constructions and interior design are protected by design patent;
Relaxing the regulations on division of design patents: The main basis for determination of the substantive requirements of the division is “whether it extends beyond the scope of content disclosed in the specification or drawings of the original patent application as filed”, and thus the indivisible explanations stated in the current examination guidelines are deleted so that the division requirements and the determination principles for the amendment and the conversion are consistent; and
Amending the regulations of graphic designs: it is determined that the “article” to which the graphic designs applies can be “computer program products”, and it is no longer to use the dashed lines which are used to express “parts not to be claimed” to express the carriers such as “screen”, “display” or “display panel”. (Jimmy Wu, Patent Department)
TIPO Trends in the First Half of 2020: Trademark Statistics
In the first half of 2020, a total of 43,385 applications for trademark registration were filed, increase 3% from the same period last year. There were 32,843 applications filed by domestic applicants (increase10%), and 10,542 applications filed by foreign applicants. A breakdown by Nice Class shows that Class 35 (advertising, business management, etc.) received the most applications (5,955) by domestic applicants and Class 9 (computers, technology products, etc.) received the most applications (2,100) by foreign applicants. Sorted by the nationality of the applicants, China (mainland) ranked first with 2,289 applications, followed by Japan with 1,908 applications, and the U.S with 1,658 applications. (Sandy Yu, Trademark Department)
The Petitions and Appeals Committee of the Ministry of Economic Affairs (“PAC”) held that the mark “玉光米” did not convey the meaning of a place.
The PAC ruled on August 13, 2020 that the characters “玉光” (translated as “jade light”) contains in the mark “玉光米” (translated as “jade light rice”) did not convey the meaning of a place, hence, the mark “玉光米” should not be deemed the place of origin of the designated goods “rice”, etc.; nor could it confuse the public as such. The PAC vacated TIPO’s denial of the trademark registration. (Alina Chai, Trademark Department)
IP Court upheld TIPO’s decision to deny the application for registration of the mark “FORZA” since it is highly similar to TIPO’s cited prior marks for the identical/similar goods “motorcycles, and parts and components thereof”
The IP Court held in its Judgment 109-Shin-Shan-Su-Tze No. 15 that the mark “FORZA”, applied for registration by Honda Motor Co., Ltd. (a Japanese company), is highly similar to TIPO’s cited prior marks “FORSA and Device” (Reg. No. 845689), “FORSA” (Reg. No. 1111223), and “G Forza and Device” (Reg. No. 1712315), for the identical/similar goods “motorcycles, and parts and components thereof”, hence that a likelihood of confusion by relevant consumers existed. The IP Court therefor upheld the TIPO’s decision to deny said application for registration based on Article 30-I-(10) of the Trademark Act. (Kevin Wei, Trademark Department)
The Supreme Administrative Court held that the registration of “BlackMamba Device” should be vacated since it could cause damage to the well-known stage name of the famous American NBA star “Kobe Bryant”
The Supreme Administrative Court held on July 9, 2020 that “Black Mamba” was the well-known stage name of the famous American NBA star Kobe Bryant before the application for registration of the cited mark “” was filed in 2016. The appellant applied for registration of “” without obtaining the consent of Kobe Bryant, damaging the publicity right of Kobe Bryant and his use of the well-known stage name in commercial activities to generate economic benefits. The Court held that the IP Court’s upholding of the TIPO’s decision to revoke the registration of the cited mark did not violate the law, and that the appeal should be denied. (Alina Chai, Trademark Department)
- Tsar & Tsai is recognized by the Chambers Global 2021 as a Taiwan Band 1 Law Firm in the fields of IP.
- Tsar & Tsai is rated by the Legal 500 Asia Pacific 2021 as a Taiwan TOP-TIER FIRM in the fields of dispute resolution, IP and TM.
- Tsar & Tsai is recognized by Corporate International Magazine Global Award as the “IP Law Firm of the Year in Taiwan-2021.”
- Jeanne Wang is recognized by Corporate International Magazine Global Award as the “Intellectual Property Lawyer of the Year in Taiwan-2021.”