February 27, 2023
Taiwan Makes Revisions to Patent Examination Guidelines The Taiwan Intellectual Property Office made some revisions regarding procedural examination and patent rights management that came into effect in December, 2022. In Chapter 1 of the guidelines, the use of electronic signatures will be accepted provided both parties can agree to the validity thereof. The signee only needs to provide a form of signature (whether it be a signature, stamp, or electronic signature) that matches the signature on the application documents. In Chapter 3 of the guidelines, in accordance with adjustments made to procedural examination, revisions have been made to 3.1 Inventor Change, 4.1 Applicant Name or Title Change, and 4.5 Inventor Name Change. Case studies have been included to help the public better understand the principles of examination. The revisions also specify that applicants who are able to rectify inconsistencies on documents submitted with their applications do not fall under this category. In accordance with a judicial ruling, TIPO also included a case study explanation regarding name changes for different applicants who belong to the same entity. In Chapter 5 of the guidelines, procedures regarding three relevant scenarios concerning postponing the filing date, namely change in applying entity, addition of listed applicants and decrease in listed applicants have been clarified according to the relevant regulations. Taiwan Releases New Trademark Distinctiveness Examination Guidelines The Taiwan Intellectual Property Office released new examination guidelines for trademarks which came into effect on September 1, 2022. Here are some of the most notable clauses: Concerning words, when a word or combination of words is using a descriptive style, if it is depicted in a special... February 7, 2023
Taiwan IP Office Plans to Issue Electronic Certificates From the beginning of 2023, the Taiwan Intellectual Property Office (TIPO) will issue patent and trademark certificates in electronic form. In order to cut down on paper usage and delivery costs as well as offer the IP right holder convenience in document management, the initiative is part of the overall government plan to modernize office procedures and encourage sustainable practices. The applicant will have the option to choose either a paper or an electronic certificate upon paying issue fees. By opting for the electronic format, the applicant may still request a paper copy if later needed (but not vice versa). The process goes through the following several steps: After receiving a notice of issuance, the applicant is instructed to download the e-certificate within 6 months from a specific webpage or in 5 days via the E-SET platform (an electronic document delivery system). The e-certificate is issued as an encrypted PDF document with security measures, and there will be a code on each e-certificate. By uploading the e-certificate to TIPO or scanning the code, it will be possible to quickly verify the document’s authenticity or even see the latest legal status of the associated patent or trademark right. An e-certificate is also available upon re-issuance, recordation of patent assignment, inheritance, and trust. Taiwan Drafts Bill to Help High-Tech Companies Lawmakers in Taiwan introduced a draft bill to institute a new Article 10-2 of the Statute for Industrial Innovation. This new law aims to create tax incentives for high-tech companies investing in Taiwan. High-tech companies making Research and Development contributions to the semiconductor... 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... 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. ... 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... Recent Past Events