The Greater China IP Updates – September 2023

September 16, 2023
Taiwan Intellectual Property Office Issues Latest Patent Updates Various regulations published earlier in 2013 became effective at the beginning of July.  Here are some of the most notable ones: An amendment was made concerning the regulations governing the determination of patent term extensions. The Taiwan Food and Drug Administration will supply data allowing TIPO to calculate the periods of domestic and foreign clinical trials for patent term extension during the regulatory registration of marketing approvals. The service of electronic priority document exchange between the Taiwan Intellectual Property Office (TIPO) and the Korean Intellectual Property Office was extended to design patents. This service not only simplifies transnational filing procedures and saves the time and cost used for sending paper documents, but also accelerates patent examination procedures. Concerning whether a prior art technique disclosed in the specification of an application can be used by the examiner as a citation, if the date of the prior art technique disclosed in the specification cannot be confirmed, the applicant has the possibility of proving the prior art technique belongs to the applicant and has not been disclosed to the public. For divisional applications, if a divisional application is filed based on the invention patent application, the declaration in respect of the invention patent application can be invoked in the divisional application, and if the invention patent application and/or the divisional application are considered to be allowable and to be the same creation as the utility model patent, the examiner should notify the applicant to select either the invention patent application or the divisional application to benefit from the continuation of patent rights. TIPO Issues...

The Greater China IP Updates – August 2023

August 16, 2023
Taiwan Intellectual Property Office Drafts Amendment to the Examination Guidelines on Disclaimers for Trademark Applications The Taiwan Intellectual Office announced on May 2, 2023, that it made a draft amendment to the Examination Guidelines on Disclaimers.  Here are some of the main points: For non-distinctive parts of a trademark, a disclaimer will be necessary even if the combination of words created by the applicant seems original but is just a description of the trademark’s designated goods or services. By issuing a disclaimer for the non-distinctive part, consumers and competitors will understand clearly that the non-distinctive part is not being claimed. Other non-distinctive signs, such as surnames, slogans, idioms, and popular terms that are not descriptive, are often expected by businesses to potentially be part of their exclusive rights. If judged to be non-distinctive, however, such signs should generally be disclaimed. Numbers larger than two, model numbers, and symbols that have been determined to be non-distinctive should be disclaimed. However, if the meaning of the numbers (such as specifications, quantities, time or era) is clear and specific to the product and commonly used in the industry, and if it can be determined that they do not raise any doubt about the scope of the trademark’s rights, they do not need to be disclaimed. Where the position, font size, or proportion of the non-distinctive part of a trademark may affect the applicant’s judgement as to whether to claim the trademark rights to that part, a disclaimer for that part should be made. If there is sufficient evidence during examination to determine that a non-distinctive element is commonly used by the industry...

The Greater China IP Update – July 2023

July 24, 2023
Taiwan Chips Act Sets Research and Development Spending at NT6 Billion The Ministry of Economic Affairs sets the research and development investment threshold at NT6 billion for companies to qualify for tax incentives under recently approved amendments to the Act for Industrial Innovation – Taiwan’s version of the US Chips and Science Act.  The announcement was made on May 2, 2023.  That sum was slightly less than the government’s original threshold of between NT5 billion and NT10 billion.  However, it is much higher than the average annual R & D expenditure of NT3 billion that the nation’s top 100 companies have committed to over the past few years.  Another requirement is that companies need to set aside at least 6% of their revenue for R & D in order to receive the tax incentives.  The targets of the government’s initiative are those companies in Taiwan that are strategically important to global supply chains.  It is also hoped that the program will encourage more overseas Taiwanese businesses to invest back home.  Besides semiconductor firms, the program is also applicable to companies that are capable of developing world-leading or innovative and scalable technology in strategic industries such as 5G, electric vehicles and low Earth Orbit Satellites.  The new tax incentives will be in place for seven years, starting this year, and the ministry will start accepting applications next year based on their investments this year.  Taiwan Semiconductor Manufacturing Co. is widely considered to be on top of what is likely to be a short list of companies eligible for tax breaks as the world’s biggest contract chipmaker plans to allocate about...

The Greater China IP Updates – June 2023

June 20, 2023
Taiwan Revises Enforcement Rules of the Patent Act The revisions to the Enforcement Rules of the Patent Act went into effect on May 1, 2023.  A summary of the key points are as follows: To determine whether any amendments are made in divisional applications, the Taiwan Intellectual Property Office shall carefully review whether their subject matter has extended beyond the content of the earlier application as filed. Applicants are required to attach a marked document indicating differences or changes in the application, with added parts underlined and deleted ones struck through, along with a relevant explanation of any and all alterations made, thus improving efficiency in the examination of divisional applications. In accordance with Article 27 of the Patent Act, if a biological material has been deposited in a depository designated by a foreign country in its territory with which Taiwan recognizes the effects of deposits based on reciprocity, and the certificate of deposit issued by said foreign depository is submitted within the time period prescribed, the applicant is exempted from the requirement of making a deposit in Taiwan. Presently, foreign depository institutions that have been reciprocally recognized by Taiwan are international depositary authorities under Article 7 of the Budapest Treaty.  These authorities shall issue documents that include certificates of deposit and viability statements, a practice that Taiwan also adopts.  In order to promote mutual recognition of biological material deposits between Taiwan and other countries, documents issued by depositories without the status of an international depository authority must include a viability statement. Taiwan Legislative Yuan Approves Draft Revision of Trademark Act The Economics Committee of the Legislative Yuan reviewed...

The Greater China IP Updates – May 2023

May 22, 2023
TIPO Issues Draft Amendments to Regulations Governing the Determination of Patent Term Extension Draft amendments have been made to Articles 4 and 10 of the Regulations Governing the Determination of Patent Term Extension, the Taiwan Intellectual Property Office (TIPO) announced recently.  Firstly, the amendment to Article 4, Paragraph 2 states that the specific patent agency may rely on documents that indicate the period of domestic and/or foreign clinical trials conducted for obtaining a marketing approval of a drug from the central competent authority in charge of the business as criteria for determining the extension of the patent term.  The Specific Patent Agency does not need to send the documents to the central competent authority for confirmation.  Another part of Article 4 states that during examination for marketing approval, the central competent authority in charge of the business shall confirm documents that indicate the period of domestic and/or foreign clinical trials and a data sheet for data exclusivity and domestic and/or foreign clinical trials submitted by an applicant.  If there is any difference between the results confirmed by the central competent authority and the data sheet submitted by the applicant, the difference shall be corrected on the data sheet and approved by the central competent authority.  Since the central competent authority has confirmed the period of domestic and/or foreign clinical trials conducted for obtaining a marketing approval, the specific patent agency can determine and calculate the period of domestic and/or foreign clinical trials based on the data sheet confirmed by the central competent authority.  Hence the proviso ‘sent by the specific patent agency’ in the current regulation is deleted.  This...