Patent Amendments ©(Part II of II)

Taiwan IP Updates бV January 2022

By Lyndon

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Taiwan and South Korea Sign MOU on Design Patent Priority Document Exchange

Taiwan and Korea signed an MOU on Electronic Exchange of Priority Document (PDX) for Design Patents on November 12, 2021 following the collaboration between Taiwan and Japan on Design Patent Priority Document Exchange in 2019. Through bilateral cooperation between the Taiwan Intellectual Property Office and the Korean Intellectual Property Office, applicants are exempt from submitting priority documents in hard copy. Priority Documents are needed in the event that a further patent application is filed with a priority claim. Under the MOU on the Exchange of Industrial Property Information and the Electronic Exchange of Priority Documents signed in 2015, the PDX program has been applicable to invention and utility model patent applications. As the aforementioned program has been put to extensive use by applicants from both countries since its implementation, TIPO and KIPO have decided to include design patent priority documents in the program. Once implemented, it can save time on mailing paperwork, streamline cross-country application procedures, and make the priority document exchange mechanism more comprehensive and robust.

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Expansion of the Accelerated Examination Program in Taiwan

The scope of applicability for the Accelerated Examination Program has been expanded, the Taiwan Intellectual Property Office announced in December 2021. Beginning on January 1^st, 2022, the AEP will be expanded to include green technologies such as energy-saving, carbon emission reduction, and resource-saving technologies. In addition, applications on the grounds of беessential to commercial exploitationбж and беinventions related to green technologiesбж will have their accelerated examination results issued within 6 months instead of 9 months after filing all the necessary documents which can then undergo an expedited examination process. This new initiative is expected to help in promoting the research and development of green patents and accelerate commercialization of related products according to TIPO.

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TIPO Releases July to September 2021 Statistics

In the abovementioned 3 month period, TIPO received a total of 18,139 applications (including invention, utility model, and design patents) as well as 24,699 trademark applications, which is a 4% and 5% decrease respectively, compared with the same period last year. 12,248 invention patent applications were filed, an increase of 2%, which was due to a slight increase in non-resident applications. The number of utility model patent and design patent applications was 3,912 and 1,979 respectively, both of which were lower than the same period of the previous year by 16% and 10%. In addition, the number of applications of top 10 invention patent applicants and top 5 design applicants in Taiwan mostly showed positive growth. For example, TSMC claimed the top spot in invention patents with 580 applications. Acer, with 30 applications, was the top company for design patent applications. Foreign inventors filed 7,419 patent applications for inventions, with Japan applying for 3,060 invention patents and 268 design patents. The number of trademark applications TIPO received was 24,699. This was a 5% decrease in total with resident applications falling by 7% and non-resident remaining stable. Class 35 (advertising, business management, retail, and wholesale services) was responsible for the most applications (4,158), which was a 9% increase. For non-resident applications, the total came to 1,177 in the Class 9 category (computer, technology products), and was a 4% increase on last year.

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TIPO Revises Examination Criteria on Likelihood of Confusion

The Taiwan Intellectual Property Office has revised the Examination Criteria on Likelihood of Confusion after referring to the guidelines of the EUIPO, JPO, the USPTO, and the judicial practice in Taiwan. The aim is to provide trademark examiners with even more specific guidelines on evaluating the likelihood of confusion when examining trademark applications. The key points are:

1. Regarding similarity between trademarks, the revision has laid down principles for evaluating the degree of distinctiveness of trademark elements, assessing each trademark as a whole, facilitating comparisons between individual parts of compound word marks, and judging the similarity between existing words/phrases and phonetic characters, comprehensively illustrated with examples.
2. Regarding the similarity of goods and services, an additional criterion, points of sale, was included in the list of determining factors for the degree of similarities between goods and services. Definitions of goods/services that are considered in competition, complimentary, or auxiliary/ancillary in relation to specific other goods or services, and supplemental information pertaining to the relations between the goods and their components, raw materials, or semi-finished products, respectively, were also incorporated into the revision.
3. Several determining factors were modified, such as whether the business of the proprietor of the earlier registered trademark pursues a diversification strategy, whether the trademark applicant possesses a bona fide intent, and the factors for being obviously improper, are part of the proviso of Article 30 of the Trademark Act.

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