Taiwan IP Updates  ¡V September 2023

By Lyndon 

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Taiwan Intellectual Property Office Issues Latest Patent Updates

Various regulations published earlier in 2013 became effective at the beginning of July.  Here are some of the most notable ones:

1. An amendment was made concerning the regulations governing the determination of patent term extensions.  The Taiwan Food and Drug Administration will supply data allowing TIPO to calculate the periods of domestic and foreign clinical trials for patent term extension during the regulatory registration of marketing approvals.
2. The service of electronic priority document exchange between the Taiwan Intellectual Property Office (TIPO) and the Korean Intellectual Property Office was extended to design patents.  This service not only simplifies transnational filing procedures and saves the time and cost used for sending paper documents, but also accelerates patent examination procedures.
3. Concerning whether a prior art technique disclosed in the specification of an application can be used by the examiner as a citation, if the date of the prior art technique disclosed in the specification cannot be confirmed, the applicant has the possibility of proving the prior art technique belongs to the applicant and has not been disclosed to the public.
4. For divisional applications, if a divisional application is filed based on the invention patent application, the declaration in respect of the invention patent application can be invoked in the divisional application, and if the invention patent application and/or the divisional application are considered to be allowable and to be the same creation as the utility model patent, the examiner should notify the applicant to select either the invention patent application or the divisional application to benefit from the continuation of patent rights.

TIPO Issues Draft Revision Notice Regarding Patent Examination Guidelines

The Taiwan Intellectual Property Office has made some amendments to certain sections of the Patent Examination Guidelines as part of an ongoing effort to reform examination practices and update other aspects of the judicial system.  Some of the highlights are as follows:

1. Concerning divisional applications, whereas now only one divisional application is permitted, the new guidelines state that in the event of a parallel filing, the applicant will have the freedom to file more than one divisional application.  However, when the parent or any divisional application proceeds to allowance, the applicant shall decide in the reply to TIPO which application sharing the same invention with the earlier granted utility model is the one to receive the patent right.  Also, division from a domestic priority basis is now possible.  An earlier application which has served as the basis of domestic priority will be deemed withdrawn 15 months from its own filing date, and TIPO will consider it as dormant because the later-filed application has replaced it as a result of priority.  However, the applicant is permitted to file for a new divisional application from the earlier-filed application to include matters that are not joined in the later-filed application.  This is to give the applicant a greater latitude of procedural freedom.
2. For the issue of double jeopardy and invalidation issues, when an invalidity challenge against a multiple dependent claim where the present challenge only addresses a portion of the patent right comprised by said multiple dependent claim and some claims therefrom, if the present challenge ultimately fails, another new invalidity challenge against the unaddressed portion of the patent right can still be instituted without the risk of double jeopardy.

TSMC Remains Top Invention Patent Applicant in 2023 H1  

Taiwan Semiconductor Manufacturing Co. retained the title of No. 1 invention patent applicant in Taiwan in the first half of this year, according to the Intellectual Property Office of the Ministry of Economic Affairs.  In addition to topping the list of Taiwanese companies, TSMC was also ahead of all foreign applicants in the six-month period from January to June 2023.  Data compiled by the office showed TSMC filed 1,171 invention patent applications, up 1 percent from a year earlier, making the chipmaker the largest invention patent applicant in Taiwan for the seventh year in a row.  Among foreign companies, South Korean tech giant Samsung Electronics Co. was the top invention patent applicant, filing 430 applications in the first half of the year, a 48% rise from a year earlier.  The office said that artificial intelligence (AI) development led to an increase in high-performance computing applications, which pushed up demand for TSMC’s high-end processes and led the company to seek more invention patents.  After TSMC, smartphone IC designer MediaTek Inc. came in second after filing 321 invention patents in the six-month period followed by flat-panel maker AUO Corp. with 228, DRAM chip supplier Nanya Technology Corp. with 219, and flat-panel supplier Innolux Corp. with 181.  The number of invention patent applications from the above-mentioned companies was evidence of the galvanizing effect of AI on the industry.  Following Samsung, US semiconductor equipment supplier Applied Materials Inc. took the second spot among foreign applicants after filing 341 invention patents in the six-month period followed by US smartphone chip designer Qualcomm Inc. with 316, Japanese electrical product maker Nitto Denko Corp with 254, and Japan-based semiconductor supplier Tokyo Electron Ltd. with 249.  In the first half of this year, a total of 24,256 invention patents were filed, down 0.2% from a year earlier, with 9,390 of them from local entities, and 14,866 from foreign entities.