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13/11/2024

TIPLO News
Accelerated Examination Program for Re-Examination (AEPRe) launched on September 1, 2024 on trial basis

　TIPO announced the launch of “Accelerated Examination Program for Re-Examination” (AEPRe) for implementation on a trial basis as of September 1, 2024. Under the AEPRe pilot program, TIPO will accelerate re-examination as long as the applicant voluntarily amends or deletes the claims rejected in previous substantive examination and retains the other non-rejected claims, which will help patent applicants secure patents.
　According to TIPO, there are two stages in the examination of invention patent applications; if an invention patent application is rejected in the substantive examination stage, the applicant may request a re-examination. Under the AEPRe pilot program, the applications eligible for accelerated re-examination are those in which not all claims are rejected in the original decision of rejection. Applicants of such applications may request re-examination of their applications by “deleting the rejected claims or rewriting the non-rejected claims into independent claims” to have the patent scope in line with the scope approved in the previous substantive examination. The reexamination cases will undergo TIPO’s accelerated examination and TIPO will issue the first office action for the reexamination within 6 months from the filing date of such cases.
　As revealed by the 2023 statistics, TIPO has received a total of 6,538 invention patent applications for re-examination, with the average pendency for the first office action and the disposal being 10.1 months and 13.1 months, respectively. The AEPRe pilot program, launched on September 1, 2024, is open to online applications without charging any official fees. Applicants of AEPRe applications will receive an office action or written decision within 6 months. Moreover, TIPO has evaluated and found that in actual practice, applicants of AEPRe applications will receive decisions within 2 or 3 months, a faster process for the applicants to obtain patents.
　Please see more details concerning AEPRe on TIPO’s website (https://www.tipo.gov.tw/tw/cp-85-977635-e7dc7-1.html). (Released 2024.08.29)

20/04/2022

TIPLO News
Amended accelerated examination program for green patents takes effect as of January 1, 2022

　Taiwan IPO’s amendments to the Accelerated Examination Program (AEP) have come into force since January 1, 2022 for the purpose of stepping up the R&D and commercialization of green patents in Taiwan. As of July 2021, there had been a total of 255 AEP applications filed for green technology patents under the condition, “Inventions Related to Green Energy Technologies” Taiwan IPO introduced to the AEP on January 1, 2014 (hereinafter referred to as “Condition 4”). It is noticeable that the 255 AEP applications filed for green technology patents under Condition 4 accounted for 2.74% of all AEP applications and a majority of them, up to 88%, were filed by domestic applicants. Also, a breakdown by industry indicates that solar energy, LED lighting, and lithium-ion battery industries are the top three ones for which these applications were filed.

Key points of the amendments to the AEP are summarized as follows:

1. Revisions of wording: The term of Condition 4 of the AEP, “green energy technologies” is revised as “green technologies” so as clarify that the eligible patent applications are not limited to only green energy related inventions.

2. Expanded scope of eligibility: The scope of technologies eligible for AEP request is enlarged to cover the green technologies that are able to save energy, reduce carbon emission, and save resources.

3. Accelerated examination: For the AEP applications that are filed under the conditions, “essential to commercial exploitation” and “inventions related to green technologies”, the 9-month pendency for Taiwan IPO’s issuing examination result after the filing of all necessary documents will be shortened to 6 months, which is an expedited and shorter examination pendency compared to the application for general inventions. The expedited examination pendency will facilitate applicants’ development of patent portfolio.

　As the world is moving toward net zero emission by 2050 and the “study and plan of accelerated examination program for green patents” is listed as a key performance indicator of the chapter, “Climate Change and Human Rights” in the National Human Rights Plan of Action that Taiwan has been promoting, Taiwan IPO not only keeps pace with the international trend but also encourages innovators of green technologies, by amending the AEP, to stick with their research and development, for the ultimate purpose of creating a win-win situation that environmental sustainability development is fully facilitated and economic force moves up through the innovation of green technologies. (Released 2022.01.03)

24/02/2021

TIPLO News
Positive Patent Examination Pilot Program for Startup Companies” implemented from January 5, 2021

　Taiwan IPO enacted and promulgated the “Positive Patent Examination Pilot Program for Startup Companies”, which is formulated specifically for startup companies to give priority to patent applications filed by newly established companies and allow eligible applicants to conduct positive interviews. During positive interviews, applicants will be informed of the grounds for rejecting their applications and be provided with advice on amendments of applications to shorten examination process.
　For the invention patent applications which are filed by startup company applicants eligible for this program are given priority for examination and are rejected, the Taiwan IPO will provide interview materials and also arrange a time for positive interview within one (1) month after receipt of the applications for positive patent examination. Examiners will provide advice on amendments of such applications on a case-by-case basis. If the applicants submit responses or amendments within a designated time period, Taiwan IPO will issue a notice of examination result within one (1) month after receiving the same. That is to say, the eligible startup applicants may acquire patents within four (4) months.
　The procedural requirements of this program are that there are no charges for the application itself and for positive interview, and applications must be filed electronically, and this program is limited to a total of 30 test applications only. The trial period of this pilot program has begun as of January 5, 2021. Relevant information or details are provided on the Taiwan IPO’s website. (Released 2020.12.24)

28/11/2019

TIPLO News
Marks found unregistrable for containing geographical indication

　Grace Optical Co., Ltd. (Chinese: 得恩堂眼鏡有限公司, a locally well-known eyeglasses company, hereinafter “Grace Optical”) filed an application with Taiwan IPO for registering “BOY LONDON” as a trademark (hereinafter the “proposed mark”) on February 26, 2018, but Taiwan IPO found the proposed mark “BOY LONDON” unregistrable on the ground that the proposed mark is likely to confuse consumers or to form mistaken belief with respect to the nature, quality, or place of origin. Disagreeing with the Taiwan IPO’s denial of their application, Grace Optical filed an administrative appeal with the Ministry of Economic Affairs and the appeal was dismissed as well, and therefore, Grace Optical instituted administrative proceedings with the Taiwan IP Court. The administrative proceedings were dismissed by the IP Court.
　Grace Optical argued that what consumers know and are familiar with is the mark as a whole, and that the proposed mark is not “LONDON BOY”, but “BOY LONDON”, which does not carry a literal meaning to form mistaken understanding that the product under the proposed mark is from London. Besides, there have been no consumers complaining against Grace Optical’s use of the proposed mark about false or misleading labeling nor other competitors filing complaint with Taiwan Fair Trade Commission against Grace Optical over unfair competition for use of the proposed mark.
　Grace Optical maintained that they are famous for the services of providing eyeglasses and prescribing and fitting eyeglasses, and have been taking a significant position on Taiwan market since their incorporation in 1965. In addition to the proposed mark, Grace Optical has duly registered its “羅密歐BOY LONDON” mark since 1991 and has been using the “BOY LONDON” mark that has been well recognized by consumers. To beat the unregistrable reason about geographical name, Grace Optical also argued that there have been other trademarks containing such words as “TOKYO”, “SEOUL”, and “Wellington”, but the products sold under these trademarks are not necessarily from Tokyo of Japan, Seoul of South Korea, and Wellington of New Zealand. It is obviously unfair for Taiwan IPO to have approved applications of the aforesaid trademarks but negated the proposed mark as a registrable one.
　According to Taiwan IP Court’s reasoning, the word “London” may be used as a personal name but is not generally used as one. It is used as the name of the city London, the capital of the UK, more often than a personal name as most people think. Hence, the word “London” would mostly mean the geographic name of the city London. In this case, even though the proposed mark contains a word “boy” before “LONDON”, it would still form a misconception that the products or services under the proposed mark come from London or are related to city London, if it is observed and seen as a whole. Moreover, as to the other trademarks containing such words as “TOKYO”, “SEOUL”, and “Wellington” as indicated by Grace Optical as rebuttal, they have been approved of registration as trademarks because they are designated on different products or services. The registrability of any proposed mark should be tested and examined on a case-by-case basis and on such factors as fact, evidence, distinctiveness, likelihood of consumers’ confusion and misconcept. (August 2019)

17/10/2019

TIPLO News
Patent Linkage of Western Pharmaceuticals comes into force in August

　Taiwan Food and Drug Administration under the Ministry of Health and Welfare issued a press release on August 20, 2019 to the effect that:
　The new chapter “Patent Linkage of Western Pharmaceuticals” incorporated into Taiwan Pharmaceutical Affairs Act as promulgated by presidential order on January 31, 2019 has officially come into force as of August 20, 2019 according to the Executive Yuan’s approval. Under the patent linkage system, a generic drug approval applicant who seeks grant of drug approval for his/her generic drug shall make relevant certification or declaration in regard to the patent(s) listed by the new drug approval holder with the competent authority, and the competent authority will stay issuance of drug approval for a period of 12 months to clear relevant patent disputes. The first applicant of generic drug approval to successfully challenge patent validity or make non-infringement declaration against the new drug and to have produced complete in full the materials required of his/her application for approval of the generic drug will be granted an exclusive marketing term of 12 months as a reward.
　Intellectual property rights protection for pharmaceuticals is on the rise around the world. Following this tendency, Taiwan’s enforcement of the patent linkage of western pharmaceuticals will form a new protective force for pharmaceutical IP rights. The patent linkage system balances the relationship between the brand-name drug company and the generic drug company. On the one hand, the patent linkage system will actualize the legal purpose of patent right protection of the Patent Act, accredit R&D performance of new drug approval holder, and ultimately cultivate a perfect IPR protection regime that will attract more R&D investment in Taiwan. On the other hand, the patent linkage system will enable generic drug companies to get hold of relevant patenting status through the listed patent information and encourage generic drug companies to create design-around inventions. By clearing possible infringement occurrences before launch of generic drugs on market, generic drug companies may be able to avoid cessation of sale due to infringement issues that will impact patients’ rights. (August 2019)

22/07/2019

TIPLO News
Taiwan IP Court clears Starbucks Taiwan of infringement allegation by the Starbucks Cookie Straws

　Starbucks Taiwan (run by Uni-Wonder Corporation; “Uni-Wonder”) launched a Frappuccino flavor, Espresso Bianco Frappuccino with cookie straw with an edible straw, Cookie Straw going with every Frappuccino purchase. However, a man surnamed Chiang, accused Uni-Wonder of infringement by the Cookie Straw. Chiang pinpointed that Starbucks’ Cookie Straw is similar to his utility model patent titled “edible straw” granted in 2014, in external design, wording for marketing, and functions advertised, and thus he sued Uni-Wonder over infringement and claimed damages in TWD1 million. The IP Court ruled in favor of Uni-Wonder in the first instance proceedings to clear the infringement allegation against Uni-Wonder, and Chiang appealed this case to the appellate court in the second instance proceedings.
　According to the IP Court judgment, the edible straw designed by Chiang consists of starch-based rolled substance and two layers of edible gum. The starched-based rolled substance is a hollow tube consisting of several overlapping starched-based layers with edible gum fully covering the starch-based rolled substance on its internal and external appearance. Two layers of edible gum coating are to avoid the starched-based rolled substance from softening and damping. The combination of the edible gum and the starch-based substance not only generates no waste but also brings convenience because of their edibility. Starbucks Cookie Straws are rolled biscuits lined on the inside with chocolate ganache that is able to simply prevent the biscuits from damping and softening. Besides, Starbuck Cookie Straws do not contain the edible gum layer that will appear after baking nor does it have the function of Chiang’s edible straw that no external packaging is required at all. Therefore, the IP Court held that Chiang’s edible straw and Starbucks’ Cookie Straws are not identical in technology, function, and effect. (May 2019)

04/07/2019

TIPLO News
Local famous Xiao Nan Men Food & Tofu Pudding store pays TWD1.27 million for trademark infringement

　The owner of Fool’s Noodles (Chinese: 小南門福州傻瓜乾麵), Huan Yu Co. (transliterated from 寰宇麵食館有限公司; hereinafter “Huan Yu”) initiated a civil action against the owner of Xiao Nan Men Traditional Food & Tofu Pudding (transliterated from 小南門傳統豆花), Xiao Nan Men Food Co. and Xiao Nan Men Catering Co. (transliterated from小南門食品有限公司and小南門餐飲有限公司; hereinafter “Xiao Nan Men Co.”) to allege trademark infringement against Xiao Nan Men Co. and also claim damages against Xiao Nan Men Co. in an amount of TWD69.84 million. Taiwan IP Court heard this civil case and ruled in favor of Huan Yu that Xiao Nan Men Co. shall pay TWD1.27 million to Huan Yu and be prohibited from using any mark identical or similar to Huan Yu’s “小南門” mark and device (hereinafter “Huan Yu’s mark”) on the ground that Huan Yu’s mark had already been duly registered and there is a likelihood of consumers confusion because of the high similarity between Huan Yu’s mark and the mark used by Xiao Nan Men Co.
Huan Yu and its responsible person have been holding Taiwanese registrations for the “小南門福州傻瓜乾麵” mark and also several marks consisting of an ancient gate tower and the three Chinese characters “小南門”. Based on the facts that Xiao Nan Men’s mark is very similar to Huan Yu’s mark and the registration time of it is later than that of Huan Yu’s mark, Huan Yu filed the civil lawsuit against Xiao Nan Men Co. to claim damages and request for Xiao Nan Men Co.’s cease in using any mark identical or similar to Huan Yu’s registered marks, even though Xiao Nan Men Co. used its mark in tofu pudding product. As a matter of fact, Xiao Nan Men Co. uses its mark also on other products out of the coverage of its designated ones, such as on pastry products, stuffed dumplings, steamed dumplings, all kinds of rice and noodles, soups, stir-fries.
　Xiao Nan Men Co. denied the trademark infringement alleged against it, either out of intention or by negligence, arguing that their store, Xiao Nan Men Traditional Food & Tofu Pudding, has already been recognized as the most famous local snack food supplier since their establishment early more than thirty years ago, and thus Xiao Nan Men Co. has acquired their independent trademark distinctiveness and business reputation for Xiao Nan Men’s mark. Xiao Nan Men Co. also tried to clear the accusation that they used their mark for products out of the designated goods of Xiao Nan Men’s mark.
The IP Court established and sustained Xiao Nan Men Co.’s trademark infringement on the grounds that (1) Huan Yu’s mark and Xiao Nan Men’s mark are slightly different in word font and design only, as opposed to their high similarity in overall appearance, concept, and pronunciation, (2) consumer confusion is likely to occur due to their similarity in the products the two marks are used, which are lunch box and noodles with homemade sauce, and also their similarity in ingredients and function, even though Xiao Nan Men Co. has added such descriptions as “點心世界” (meaning “snack world” in English) and “傳統美食” (meaning “traditional fine food” in English) that do not specify any kind of food, and (3) registration of Huan Yu’s mark is earlier than that of Xiao Nan Men’s mark and Huan Yu’s mark has acquired its distinctiveness after its long-term use. This decision is appealable. (April 2019)

12/06/2019

TIPLO News
Taiwan’s Legislative Yuan greenlights the amendment to partial provisions of Taiwan Patent Act

　Taiwan IPO issued a press release to the effect that Taiwan’s Legislative Yuan passed the amendment to partial provisions of Taiwan’s Patent Act on April 16, 2019. The amendment will boost the development of Taiwan’s design industry by extending the term of design protection, relax restrictions on divisional applications for invention and utility model patents, and further enhance review efficiency of patent remedies, and ultimately establish a more complete and robust patent protection system.
　In response to law relaxation and international regulation adjustment and for perfecting patent examination practices, Taiwan IPO proposed the amendment to partial provisions of the Patent Act and successfully had it approved by the Executive Yuan on December 27, 2018 and further submitted to the Legislative Yuan for deliberation. Highlights of the amended seventeen articles are summarized as follows.

1. Relaxation of the time limit and applicable scope for filing divisional applications

Under this amendment, a request for division of application may be filed after receipt of the allowance decision of either the first examination or re-examination of the invention patent application, and the timing restriction for filing a divisional application is also extended from the current 30 days to 3 months after receipt of an allowance decision. The same stipulation shall apply also to utility model patent applications.

2. Review efficiency improvement in invalidation proceedings

In order to avoid delay in invalidation proceedings caused by undue and constant submissions of supplementary grounds, evidence, or amendment for invalidation by the parties to invalidation proceedings, this amendment imposes a statutory 3-month time period for submission of grounds for invalidation, and delayed submissions will not be examined. The amendment also designates a time period during which patentees may request for amendment of claims during invalidation proceedings.

3. Stipulation for filing post-grant amendments of utility model patent

Without going through substantive examination, claims of utility model patents may be amended at any time after grant in an undue manner, which will prejudice a third party’s rights and interests. To avoid the foregoing situation, the amendment specifies time limits for post-grant amendment and also sets forth that post-grant amendments shall be rendered after substantive examination, instead of formality examination as stipulated currently.

4. Extension of design patent term

By reference of the Hague Agreement Concerning the International Registration of Industrial Designs that adopts 15-year term for design patent protection and for reinforcing design patents protection, the amendment extends the term of design patents from 12 to 15 years, which will facilitate the development of Taiwan’s design industry.

5. Solution of patent-related records preservation

Under the current Patent Act, patent-related files shall be kept permanently, and thus there have been a total of more than 2.1 million of patent-related files accumulated and kept for the time being, which has resulted in a problem of insufficient storage space. Following international practices, the amendment provides that patent-related files or documents should be kept for a specific time period by classification, and those without preservation value may be destroyed periodically so as to solve the file storage space problem.
　Taiwan IPO’s amendment has removed some regulatory restrictions in the current Patent Act, the relaxation that will upgrade examination efficiency, conduce to enterprises’ patent deployment, and enhance the development of Taiwan’s industrial design. This amendment will be propagandized in the future to provide to people a clear picture with respect to the details of the amendment. (April 2019)

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