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Newsletters

Deep & Far Newsletter 2022 ©
Oct (1)

Taiwan IP Updates  V October 2022

By Lyndon 

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Taiwan IP Office Adjusts Guidelines for Parallel Filing

In Effective July 1st 2022, the Taiwan Intellectual Property Office has ordered some changes to the Patent Examination Guidelines.  Concerning parallel filing, there were some questions as to how the IP Office should handle a pending invention patent application if, in the meantime, the granted utility model that covers the same subject matter is invalidated.  First of all, it should be noted that filing an invention patent application and a utility model application on the same day, by the same applicant and for the same subject matter, is a commonplace and practical strategy for getting early protection of an invention.  Utility models, giving protection of the shape and structure of an article, aren’t examined substantively, so they will be granted protection within just a few months.  On the other hand, the examination of an invention application for the same subject matter will take longer.  That could take up to one year or so, and if the invention patent application is allowed, the applicant can then opt for either the allowed invention application or the already granted utility model.  If the former is chosen, the utility model rights will be extinguished.  With the new guidelines, the procedure about how to deal with parallel filings when the granted utility model is invalidated has now been decided upon.  Now, the validity of an invention patent application must remain consistent with the validity of the granted utility model.  If the utility model invalidation is appealed, the examination of the invention patent application should be suspended during that process.  The applicant does, however, have the right to make amendments to the invention application such that it is substantively different from the utility model claim.  In that case, the examination of the invention application can continue.

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TIPO Releases IPR Statistics for the First Half of 2022

In the first 6 months of 2022, the Taiwan Intellectual Property Office received 34,753 patent applications for invention, utility model, and design patents, marking a 1% decrease from the same period last year.  TSMC ranked first among resident applicants with 1,163 cases, while Applied Materials ranked first among non-resident applicants with 438 cases.  The number of invention patent applications (24,316 cases), accounting for the majority of all patent applications received by TIPO, saw an increase of 2%.  This was due to an increase in applications from large enterprises both resident and non-resident.  Besides TSMC, the other top resident applicants were Nanya (249 cases), and Innolux (179 cases).  The number of invention patent applications filed by domestic colleges and universities rose by 3% to 840 cases.  Regarding non-resident applications, invention patents (14,960 cases) grew by 6% with Japan (6,193 cases) in first place and the U.S. (3,759 cases) in second place.  During the same time period, trademark applications grew by 0.4% with a total of 46,578 cases.  The number of resident applications (36,449 cases) went up by 4%, while that of non-residents (10,129 cases) was down by 11%.  Looking at application classes, resident applicants filed the most applications (7,378 cases) in Class 35 (advertising, business management, retail and wholesale services, etc.), while non-resident applicants took the top spot in Class 9 (computer and technology products)..

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TIPO Looks at Undisclosed Disclaimers

The Taiwan Intellectual Property Office recently clarified the regulations about undisclosed disclaimers as part of the revisions to the Patent Examination Guidelines.  An undisclosed disclaimer is sometimes used when an applicant attempts to overcome a rejection in an Office Action.  The new guidelines state that when disclaiming matter voluntarily before the issuance of an Office Action, the applicant shall submit sufficient supplementary prior art documents and supportive statements to the Examiner who has the discretion to determine whether the disclaimer involves new matter.  Without supplementary submissions, the disclaimer will be considered as introducing new matter, except for cases in which the prior art information was previously provided in the disclosure as filed.

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Taiwan’s NTU Wins Trademark Suit

The Taipei District Court has ordered a cram school to pay National Taiwan University NT6.23 million dollars for trademark infringement.  The court ruled against the operator of Taida Cram School in front of Taipei Main Station, and the cram school was ordered to stop using the word “Taida” in Mandarin or English for its name or any other purpose.  Besides the abovementioned cram school, NTU has asked dozens of other businesses across Taiwan not to use its name which is trademarked. The Ministry of Economic Affairs had previously rejected the cram school’s application to register the trademark “Taida” on the grounds that the word is an abbreviation for NTU in Mandarin Chinese.  NTU began registering its trademarks in 1983, including its school badge and the school’s names in Mandarin and English, and they were all approved by the Intellectual Property Office.  The cram school operator said that its registration was approved by the Taipei City Department of Education in 1972, and it also used the name on T-shirts in 2008 without any issue.  After the court ruling, the university issued a statement saying that they would inform other infringers to stop using the trademarked name or otherwise they would be taken to court..

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