Patent Amendments ©(Part II of II)

Taiwan IP Updates – October 2021

By Lyndon

Revisions to the Patent Examination Guidelines on Computer Software-Related Inventions by TIPO

The Taiwan Intellectual Property Office (TIPO) announced changes to the guidelines on software patent applications as a response to the latest developments in that field. The purpose of the revisions is to specify the types of computer software-related inventions that comply with the invention definition as stated in Article 21 of the Patent Act, highlight the factors that determine the inventive step and prescribe that AI inventions are subject to statutory exclusion under Article 24 of the Patent Act. An invention is defined as the creation of a technical idea, and in software terms that could be controlling a machine or its relevant processes, or computing or processing data, which demonstrates the technical properties of an object. The guidelines outline what software doesn’t reach the standard of inventiveness, such as mathematical formulas, an artificial rule, any aspect of human mental activity and practicing a business method. Also, if a computer software-related invention utilizes a program, artificial neural network or AI to execute a method for processing information related to medical treatment, which pertains to diagnostic, therapeutic and surgical methods for the treatment of humans or animals, then the method invention is not regarded as acceptable subject matter and will not be approved for an invention patent.

TIPO holds APEC Workshop on Alternative Dispute Resolution in the Field of IPR

TIPO held the 2021 APEC Workshop on the potential for use of Alternative Dispute Resolution (ADR) in the field of Intellectual Property Rights on July 29^th and 30^th, 2021. The workshop was held online with more than 450 participants from various member economies of APEC, including Australia, Canada, Hong Kong, Mexico, New Zealand, Peru, Singapore, Thailand, Vietnam and many others. A wide range of experts such as lawyers, government officials, judges, mediators, patent agents amongst others exchanged their views. Lectures were delivered online by notable officials, lawyers and arbitrators invited by TIPO and selected for their experience and expertise. The basic concepts underlying Alternative Dispute Resolution as it pertains to IPR were presented in the lectures. The participants explored the advantages and limitations of mediation, arbitration, and online dispute resolution in the field of IPR as well as the relevant legal and practical experiences to be found in the different economies. The result was a fruitful exchange of views and diverse perspectives which provided an opportunity for the participants to thoroughly explore the potential use of ADR. A report will be published on both APEC and TIPO’s websites in due course, and it is anticipated that it will be useful for women, youth, and MSME (Micro, Small, and Medium Enterprises) operators in learning about more economically feasible and effective options to resolve IPR-related disputes and how to enhance their ability to protect their IPRs.

TIPO Announces Full Implementation of Fast-Track Trademark Examination Program

On May 1^st, 2020, the Taiwan Intellectual Property Office initiated a pilot run for the fast-track trademark examination program. Due to the positive results of the program, such as the average processing time of the first office action being about 1.5 months shorter than those not filed under the program, TIPO decided to make the program permanent one year later on May 1^st, 2021. In the first year of the program, more than 50,000 fast-track applications were filed, and those applications accounted for about 60% of the number of new applications filed. This shows a positive acceptance and understanding by the applicants about the program. The fast-track program uses the e-filing system and the names of the designated goods or services listed in the e-filing system, and it needs the applicants to have all the necessary documents ready before filing and pay the fees shortly after. It also illustrates the demand among applicants to have a shorter examination process. There is also a fee-based accelerated examination mechanism under discussion for those applicants unable to utilize the fast-track system. This is part of TIPO’s aim to provide diversified measures to fulfill the needs of applicants.

Council of Agriculture Amends Article 23 of the Regulations of Scientific and Technological Research and Development Results Ownership and Utilization (Taiwan)

In order to strengthen the protection and application of Taiwan’s research and development results, enhance competitiveness, and prevent the outflow of Taiwan’s proprietary agricultural technologies, Article 23 of the Regulations of Scientific and Technological Research and Development Results Ownership and Utilization has been amended. The newly amended article states that if an R & D result is to be authorized to be implemented outside of the jurisdiction of Taiwan without the consent of the Council of Agriculture, according to the regulations, the Council may exercise administrative control or notify the Ministry of Science and Technology or the Ministry of Education. In addition, the Council of Agriculture has incorporated the relevant regulations into the provisions of science and technology project grants and commissioning contracts.