Taiwan IP Updates  ¡V Feb 2024

By Lyndon 

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Taiwan and US Signs MOU on the Secure Exchange of Patent Data

On November 22, 2023, Taiwan and the US signed the MOU on the Secure Exchange of Patent Data, streamlining and reducing the cost of patent priority claims for Taiwanese applicants who annually file over 20,000 patent applications in the United States.  The annual number of patent applications filed by Taiwanese has consistently been around 20,000 in recent years, but rose 6% from 2021 to 2022.  The MOU aims to alleviate this burden by facilitating the secure exchange of priority documents between the Taiwan Intellectual Property Office (TIPO) and the United States Patent and Trademark Office (USPTO).  The collaboration between Taiwan and the US on the electronic exchange of priority documents began in 2016 through TIPO and USPTO’s bilateral discussions.  Given the importance of information security, both confirmed details related to information equipment and transmission meticulously.  After continuous efforts from both sides, the MOU was finally signed in November 2023.  This milestone in the deepening of Taiwan’s relations with the US follows the implementation of the Patent Prosecution Highway (PPH) project in 2011, and the signing of the MOU on Intellectual Property Rights Enforcement Cooperation in 2017.  To create an environment conducive to international patent applicants, TIPO has launched the electronic priority document exchange (PDX) program with Japan and South Korea in 2019 and 2021 respectively.  The recent expansion in PDX collaboration with the US shall greatly increase the convenience of Taiwanese applicants filing patent applications in the US, as well as for US applicants filing in Taiwan – a mutually beneficial arrangement.  Following the signing, TIPO and USPTO will conduct verification tests on information systems. Upon the completion of information security equipment testing by both offices, the implementation start date will be publicly announced.

Accelerated Examination for Trademark Applications in Taiwan

An amendment to the Trademark Law passed the third reading on May 9, 2023.  It is expected to be implemented early this year.  Some of the highlights are as follows:

1. Accelerated examination will be completed in two months. Usually, trademark applications take six to eight months.
2. The official fee for accelerated examination is NT 6,000.
3. The goods or services must be in use or ready for use.
4. A reason for the applicant’s necessity must be provided.  Some examples include: the trademark is being infringed by a third party, the applicant has received a warning letter concerning trademark infringement, the trademark is needed by a third party for license, the applicant already has a contract for planned sales in the market for the trademark, and the applicant already has a contract for exhibition participation for the trademark.
5. Accelerated examination cannot be used for applications in which the designated goods or services are broad or unclear, or the trademark is a three-dimensional representation or an audible sound or it is involved in a controversial case.
6. Without payment of the official fee, no official notice can be given.
7. The office will issue a notice of correction within 10 days if there is a need for more information.  Failure to correct the application will result in the examination proceeding according to the regular schedule and the accelerated examination fee will not be refunded.