Taiwan IP Updates  ¡V November 2021

By Lyndon 

¡@

2020 Invention Patent Application Trends across Technology Fields in Taiwan during Covid-19 Epidemic

The Taiwan Intellectual Property Office received 43,921 invention patent applications in 2020.  Whilst non-resident applications fell by 6%, resident applications remained stable.  Although semiconductors and computer technology took the top 2 spots, the total numbers were fewer than in 2019.  However, applications filed in the fields of medical technology and biotechnology saw double-digit growth.  Residents filed the most applications in computer technology (2,329 cases), and for non-residents, biotechnology recorded the highest growth year on year at 18.1% (840 cases).  The top two applicants in computer technology, semiconductors and digital communication fields were Realtek Semiconductor (118 cases) and TSMC (788 cases).  In computer technology, China, the U.S. and South Korea applicants increased their filings in 2020.  Also, the top applicants in medical technology, biotechnology and pharmaceuticals were Daio Paper (34 cases), Genentech (17 cases), and TCI (40 cases) respectively.  Japan filed the highest number of applications in medical technology among non-residents, and in the biotechnology field the U.S. showed healthy growth.

¡@

Taiwan Considering Legal Reforms after Applying to Join CPTPP

The Executive Yuan is ready to propose amendments to the Patent, Trademark and Copyright Laws to expedite accession to the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP).  After 9 other laws have been amended to pave the way for joining the CPTPP, the Cabinet plans to pass proposed amendments to the Patent Act, the Trademark Act and the Copyright Act before going to the Legislative Yuan for final approval.  For the Patent Act, one possible amendment could allow a pharmaceutical company to sue for infringement during the evaluation and approval period for a new drug.  This would increase protection for new intellectual property in medicine although domestic drug makers may feel it is biased in favor of large international firms.  Amendments to copyright laws would allow prosecutors to take certain infringement cases to court without a complaint being filed.  This would mean copyright violators could be more easily punished, but again local legislators have concerns about possible downsides.  A possible change to the trademark law would see counterfeiting trademarks on packaging become a crime.  Although more work in the legislature needs to be done, now that Taiwan has applied to join the CPTPP, the advantages of joining before China will not be lost on the relevant persons.

¡@

Taiwan Customs Launches New Initiative for IP Protection

Taiwan Customs has established an information exchange platform after implementing the amendment to the Implementing Rules for Protecting the Rights and Interests in Trademark on the Border on September 15, 2021.  The new online platform means a trademark owner can readily retrieve available data, including digital photo files of suspected infringing goods for verification purposes when notified by Customs.  This replaces the old system of having to visit the Customs office within 24 hours to verify whether a batch of suspect goods were counterfeit or not.  This will doubtless be of benefit to IP holders protecting their brands.

¡@

Taiwan Updates Notes on Design Patent Specification and Drawings

As a follow up to the Design Patent Substantive Examination Benchmark revisions in 2020, the Taiwan Intellectual Property Office has updated the Notes in May of this year.  Firstly, the specification shall include the title of the claimed design as well as a literal description of the design by making reference to the drawings.  The applicant can choose as the title the name of an article commonly used in the relevant art or one referenced from the International Industrial Design Classification.  The function and intended use of the article to which a claimed design is applied shall be included in the specification unless the title makes its function obvious.  A description of the outer appearance of a design such as its shape, pattern, or coloring shall be included in the specification with reference to the drawings if it is not clear in the drawings.  If any part of the drawing is omitted due to symmetry or some other issue, or if some of the content of the drawings is not part of the claimed design, that information must be described in the specification.  These extra details in the updated notes are expected to make things clearer for both the applicant and the examiner.

Recent Guidelines from TIPO for Describing Image Designs

The Taiwan Intellectual Property Office has recently issued some expanded guidelines for design patent specifications and drawings.  For example, an article to which a design is applied may be identified as a display, screen, display panel or any other physical article with a display device.  It may also be identified as a computer software product or computer software.  A title for application programs or software which do not have a physical form, image designs can be identified as images generated by computer programs or software graphical user interfaces.  For physical items such as screen, mobile phone, washing machine, the images may be identified as screen images, mobile phone images etc.  If necessary, a description of the intended use of the article to which an image is applied can be included in the specification.  If there are multiple views included in the drawings, a description must be made in the specification regarding the relationship of the multiple views and the order of the change of views.  If the article to which an Image design is applied is a computer program product, the drawings need only disclose the front view or plan views of the computer image or graphical user interface, without the need to draw the screen, display or other physical articles in solid or dashed lines.  If an image design is applied to a specific article like a mobile phone or a washing machine, the article should be replaced with a circumferential dotted line surrounding the image design.  If a design has a three dimensional image, it may be illustrated in the drawings of the specification in the various forms of perspective views.

¡@

¡@

¡@