The Greater China IP Updates – December 2022

December 28, 2022
Taiwan’s Judicial Yuan Announces Draft Amendment to the IP Case Adjudication Act Here are the highlights of what is likely to be the biggest overhaul of the IP Case Adjudication Act since it was implemented in 2008: The administrative remedy system for patent and trademark cases will change from the current administrative litigation system to the adversary system.  If a party files an appeal with the court against a Decision rendered by the IP Office, the case will be tried in accordance with the civil procedure, and the defendant, depending on the nature of the case, may not be the IP Office, but instead may be the opposing party such as an invalidation petitioner, or the applicant of a cancellation action. Civil disputes relating to patents, software copyrights, and trade secrets will be mandatorily represented by lawyers.  Unless the value of the plaintiff’s claim is low, that rule will be valid for other civil cases too. In principle, the court should discuss with the involved parties via their lawyers regarding the planning of a trial unless the case does not require legal representation.  In patent litigation cases, the judge shall, in a timely and appropriate manner, disclose his or her interpretation of any disputed terms recited in the claims, ex-officio or upon the request of a party. Currently, reports drafted by court experts formally known as Technical Examination Officers (TEOs) are not disclosed to any parties.  The Amendment now makes it clear that when a judge deems it necessary, he or she may disclose all or part of the content of the Reports drafted by TEOs and the parties...

The Greater China IP Updates – November 2022

November 17, 2022
Revisions to the Examination Guidelines on Distinctiveness of Trademarks Took Place in September in Taiwan To enhance the examination principles for distinctiveness of various types of trademarks, the Taiwan Intellectual Property Office has promulgated revisions to the Examination Guidelines on Distinctiveness of Trademarks.  TIPO has made the revisions to ensure that the basis on which distinction is determined for trademarks aligns with current market transactions.  The main revisions are as follows: More details have been added to the different composition patterns of foreign alphabets. Reference examples for determining whether descriptions are designed and distinctive have been provided. Assessment criteria and examples for alphanumeric combinations and numbers have been added. Examples of popular graphics, purely informational graphics, and commercial design graphics have been added. Criteria for country names, geographical images, and geographical names used in descriptions of product origin as well as misleading use or misrepresentation have been added. Assessment criteria and reference examples for names and portraits of well-known public figures who are recently deceased have been provided. Revised criteria for slogans, common words, new terms and idioms have been added. Trademark graphics which include the full name of the company or domain names are considered strictly informational in order to prevent affecting the certainty of the scope of trademark rights and the function of correctly indicating the source of the product or service in the event that trademark rights are transferred or there is a change of name after registration. Taiwan’s Supreme Administrative Court Affirms Artificial Intelligence Inventions Not Patentable The Taiwan Intellectual Property Office and the Ministry of Economic Affairs has rejected several applications invented by AI. ...

Nanda Lau heads Beijing, Shanghai Offices of Herbert Smith Freehills

November 17, 2022
As part of the firm’s expansion plans for China and Asia, Herbert Smith Freehills has appointed partner Nanda Lau to lead the firm’s Beijing and Shanghai representative offices. Nanda will continue to lead the firm’s China corporate practice and Shanghai representative office in her new role, reporting to China Managing Partner Matt Emsley. She will be collaborating on the ground in Beijing with partners Monica Sun and Calvin Ho. Matt Emsley will work with Stanley Xie, a capital market partner of Herbert Smith Freehills Kewei joint operation, to jointly lead the capital markets team in mainland China. Stanley will split his time between Shanghai and Beijing. Herbert Smith Freehills has been present in China for some 40 years, and has seven partners and 21 lawyers in mainland China, as well as five partners and 27 lawyers at its joint operation firm Kewei. Established in 2019, the Herbert Smith Freehills-Kewei joint operation allows the firm to provide seamless China-related legal services to clients through a single relationship, including access to quality Chinese law advice from Kewei. “The China market has changed dramatically since our current structure was created in the 2000s, and our joint operation with Kewei in China has now added even more capabilities and clients,” said Nanda. “The time is right to refresh the structure to reflect our business and clients today by aligning our integrated team approach across the two mainland representative offices to better serve our expansion ambitions.” “Our China lawyers already work together across the three offices on corporate, capital markets and disputes matters every day,” said China managing partner Matt Emsley.  “Nanda’s leadership will strengthen that collaboration and help us increase...

The Greater China IP Updates – October 2022

October 17, 2022
Taiwan IP Office Adjusts Guidelines for Parallel Filing 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...

Climate Change Disclosure in China and How Best to Measure

September 21, 2022
INTRODUCTION 2023 will be a year of substantive climate change action as all EU market participants (EMPs) and China market participants (CMPs or together Financial MPs) will be accountable to comply1 with a plethora of rigorous and exacting disclosure requirements on how they are managing emissions. Given that China has been the largest CO2 contributor for the last decade2 and consistently responsible for nearly a third of the world’s emissions3 since 2018, it is in the best position to improve the global trajectory. The table below shows the top carbon emitters by jurisdiction. Accurate emissions measurement matters, given that significant change is required to adjust the current direction (shown below) and avoid impending issues caused by global temperature rise. This article describes the complexity of emissions measurement among multinational corporates in China and their related investment community, given the dynamic multi-jurisdictional regulatory landscape. It then demonstrates the current issues and concludes with a practical means to navigate them. GLOBAL REGULATORY MOVEMENT As mentioned, China and the EU have established significant systems (i.e., regulations and carbon measurement via their Emission Trading Systems (ETS)) that require immediate action from FMPs to meet 2023 mandatory reporting requirements. 2023 compliance deadlines should be feasible, given the impetus began in 2015 via COP214, where leaders5 pledged to have strategies implemented within five years. However, most regulatory announcements occurred around the five-year mark (2020) and have accelerated since. Most critical are the major emitters.6 Among them, the EU and China7 have made the greatest regulatory strides. Accordingly, FMPs in these markets are facing an imminent and arduous compliance feat. For example, in March 2020, the...