Patent Amendments ©(Part II of II)

Taiwan IP Updates – March 2022

By Lyndon

Taiwan’s Hon Hai Secures Over 54,200 Invention Patents Globally

Hon Hai Technology Group, also known internationally as Foxconn, announced on January 10 that it has secured over 54,200 invention patents across the world, with 62.5 percent of them granted in the United States and Japan. Hon Hai, which assembles iPhones and iPads for Apple Inc., said it has gotten 17,600 patents in the U.S. and 16,200 patents in Japan. Hon Hai has also acquired more than 11,200 invention patents in China and 5,260 in Taiwan. About 17 percent of the patents were in the area of computer accessories, and 14 percent were in semiconductors. Patents related to processing and detection technologies accounted for 13 percent of the total, while the robot and optoelectronics equipment were 12 percent, and display equipment claimed 11 percent. These impressive figures are due to a drive in recent years to boost IP holdings which play a key role in staying ahead of its rivals as well as the chance to break into new fields.

TIPO Launches Design Patent Priority Document Exchange Program with JPO

The Taiwan – Japan MoU on Electronic Patent Priority Document Exchange (PDX) was signed in 2013, and was applicable to both invention and utility model patent applications. As the PDX program was put to extensive use by applicants from both countries since its implementation, an additional MoU on Design Patent Priority Document Exchange was signed in 2019. By providing an alternative to mailing paperwork, the PDX program can increase application efficiency and streamline cross-country application procedures. Therefore, beginning January 1, 2022, a design patent applicant will be deemed to have filed a priority document if he or she provides an access code issued by the JPO within 10 months after the earliest priority date.

Amendments to the Copyright Act and the Trademark Act approved in Taiwan

In order to bring the laws more in line with the requirements of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), the Executive Yuan approved draft amendments to the Copyright Act and the Trademark Act. One amendment is that police cannot investigate digital piracy, the illegal distribution of data, and the public streaming of data unless a complaint has been made. The aim of the amendments is to clarify the definition of copyright infringement to improve public awareness with a knock on effect of reducing the judiciary’s workload. Also, this would bring the relevant laws to harmonize more closely with the rules of the CPTPP which the Office of Trade Negotiations hopes to join. The amendments define copyright infringement as acts that violate the rights of others who have paid for their goods, acts that duplicate works in their entirety, and acts that have cost rights owners more than NT 1 million dollars. Concerning trademarks, any action of forgery or falsifying trademarks would be considered an intentional or negligent offense, regardless of the individual understanding the ramifications of their actions, and offenders would face criminal prosecution and penalties.

Green Patent Revisions Added to Accelerated Examination Program in Taiwan

The Taiwan Intellectual Property Office announced that the revisions for green patents took effect on January 1, 2022. These revisions were made in an effort to promote research, development and commercialization of green patents in Taiwan. The Inventions Related to Green Energy Technologies (Condition 4) was added to the AEP as follows:

1. The term green energy technologies was amended to read green technologies in order to clarify that eligible patent applications are not limited to green energy only.
2. The scope of eligibility has been expanded to include energy-saving, carbon emission reduction, and resource-saving technologies.
3. For requests on the grounds of ‘essential to commercial exploitation’ and ‘inventions related to green technologies’, examination results will be issued within 6 months (down from 9 months previously).

As of July 2021, 255 AEP requests have been filed for green technology patents, and Taiwanese applicants have filed the majority at 88% with solar energy, LED lighting and lithium-ion battery technologies being the top fields.

A Look at Third Party Observation in Taiwan

Third Party Observation is one of several options a business can use to counter a patent application that is perceived to cause possible infringement issue or interfere with their IP rights. The purpose is to allow members of the public to notify the Patent Office of state of the art information that might be of relevance for assessing novelty or inventiveness during the examination process. A Third Party Observation can be submitted after the date of publication of the application, and by so doing has the possibility of forcing the other party to narrow down the scope of the claims or even forestalling the application altogether. This tactic is also much cheaper than filing an invalidation action after a patent application has been granted a patent. In Taiwan, the operational guidelines were revised and implemented on 1 September, 2021. A Third Party Observation can be filed against an invention patent application only and prior to approval of an invention patent application. Any person can file and the identity of the person would be in confidence unless the third party chooses to make their identity known. The applicant of the patent will be informed of the filing of a Third Party Observation and will be allowed to review the file. The third party will not receive an official opinion, but they will see from the official examination results whether or not their information has been considered relevant.

TSMC Applies for Most Patents in Taiwan

Taiwan Semiconductor Manufacturing Co. applied for the highest number of Patent applications in Taiwan in 2021, making it the fifth year in a row it has done so. The world’s largest contract chipmaker filed 1,950 invention patents, an increase of 78% from 2020, as it intensified its efforts to upgrade its technologies and cement its lead over its peers in the global market. Of the 1,950 applications filed, 1,053 patents were granted, which was also the highest number secured by an applicant in 2021. Currently, TSMC is developing the sophisticated 2-nanometer chip-making process, having started commercial production on the 5-nanometer process, and is hoping to go into mass production with the 3-nanometer process later this year. In comparison, flat-panel maker AU Optronics Corp. had the second-highest number of applications last year at 471, a 1% annual increase. In third place was Acer Inc. with 462 patent applications, down 12% from 2020. Due to the global chip shortage and rising demand for electric vehicles and renewable energy, tech companies have invested more in research with the resulting increase in applications. Amongst foreign companies, Qualcomm, the smartphone chip designer, was the largest applicant in Taiwan, filing 845 invention patents, an annual increase of 17%.