News Topics
I. [EP] AI Cannot Be Named As Inventor On Patent Applications Under EPC
II.[TW] Draft amendments to the Trademark Law in response to the CPTPP
III.[JP] Statistical analyses of Japanese patent trends in 2021
IV.[JP] Implementation of Trademark Examination and Trial in China
I. AI Cannot Be Named As Inventor On Patent Applications Under EPC
Background
Dr. Thaler filed two patent applications (Application Numbers are EP 18 275 163 and EP 18 275 174) with European Patent Office (EPO), and designated AI system (“DABUS”) as the sole inventor in the application forms. The Receiving Section of the EPO has refused the applications, because only a human inventor could be an inventor within the meaning of the EPC and the AI system could not transfer its right to apply for patents to its owner, Dr. Thaler. Afterwards, Dr. Thaler appealed to Legal Board of Appeal of EPO, but the Legal Board of Appeal dismissed the appeal on December 21, 2021.
Key Reasons for dismissing the appeal
1.Under the EPC the inventor had to be a person with legal capacity.
2.The statement indicating the origin of the right to the European patent under Article 81, second sentence was not in conformity with Article 60(1) of EPC.
3.The EPO was competent to assess whether such statement referred to a situation which was encompassed by Article 60(1)of EPC.
References
Hyperlink：Communiqué on decisions J 8/20 and J 9/20 of the Legal Board of Appeal
Dr. Cross Liu
Executive Manager of RichIP Group
II. Draft amendments to the Trademark Law in response to the CPTPP
In order to actively strive to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), and strengthen trademark protection. The Executive Yuan approved the draft amendments to the Trademark Law on January 20, 2022. The main points of the amendments are as follows:
1.Amended the subjective elements of infringement liability for counterfeiting labels of trademark
Deleting the word “knowingly”(Chinese words: 明知) to comply with Article 18.74 of CPTPP, which stipulates that a person who knowingly uses or uses with reasonable grounds to know (including indirect intention and foreknowable negligence) a registered trademark without prior consent is liable for infringement.
2.Added the penalty regulations for counterfeiting labels of trademark or collective mark
In accordance with the provisions of Article 18.77, Item 3 of the CPTPP:
“Each Party shall provide for criminal procedures and penalties to be applied in cases of willful importation and domestic use, in the course of trade and on a commercial scale, of a label or packaging:(a) to which a trademark has been applied without authorization that is identical to, or cannot be distinguished from, a trademark registered in its territory; and
(b) that is intended to be used in the course of trade on goods or in relation to services that are identical to goods or services for which that trademark is registered.”
Article 95, Item 2 of the Trademark Law is therefore added, and the essential elements are specified to meet the clarity principle of penalty.
In addition, for avoiding the doubt of application, the amendments further stipulate that applications through electronic media or internet are prohibited.
3.Amended the penalty regulations for counterfeiting labels of certification mark, and the subjective elements of penalty for selling or intending to sell infringing goods made by others
The text of Articles 96 and 97 of the Trademark Law is amended for the reasons same as above.
References
Hyperlink: CPTPP English version
Chun-Wei Lo
Patent Counselor of RichIP Group
III. Statistical analyses of Japanese patent trends in 2021
Japan Patent Office (JPO) recently issued the “Patent Administration Annual Report: 2021 Edition” disclosing various data of patent applications (Invention and Utility Model) filed by Japanese local companies and foreign companies from 1980 to 2020.
1.Statistics on “the number of patent applications by Japanese companies and foreigners” and “R&D expenses invested by Japanese companies”
Patent applications filed by Japanese companies:
The number of patent applications began to increase gradually from 1980, and then decreased slightly after the introduction of the improvement system in 1988. The number of patent applications, however, increased again until it reached 387,000 in 2000. Afterward, it began to decrease continuously year by year and declined to 245,000 in 2019, and then to 227,000 in 2020 due to the impact of the Corona Virus Disease 2019 (COVID-19).
Patent applications filed by foreigners:
Similar to the trend of patent applications filed by Japanese companies, the number of patent applications filed by foreigners increased steadily from 1980, and then decreased in 1988. The number of patent applications increased again thereafter and reached 63,000 in 2007. Such number fell to 53,000 in 2009 due to the financial crisis of Lehman Brothers in September 2008 and then began to increase gradually until 63,000 in 2019 and 61,000 in 2020.
R&D expenses invested by Japanese companies:
R&D expenses invested by Japanese companies have grown year by year since 1980. Obviously, they were less affected by the changes of patent system and the pandemic. The R&D expenses were only slightly decreased by the financial crisis in 2009 and then continuously increased until 2020.
Description of Figure 1：
Dark Green : Utility Model (Foreign Applicants);
Light Green : Inventions (Foreign Applicants);
Gray : Utility Model (Japanese Applicants);
Red : Inventions (Japanese Applicants); and
Pink : R&D expenses by Japanese companies (trillion yen).
2.Statistics on “the number of patent applications filed abroad by Japanese companies” and “The total trade of Japanese companies with foreign countries”
With the developments of globalization, the total trade made by Japanese companies with foreign countries has been increasing year by year since 2009. In contrast, the number of patent applications filed abroad by Japanese companies has stopped growing since 2012. Thus, as compared with the development of international trade, Japanese companies became more cautious in the international Patent Portfolio.
Description of Figure 2：
Pink (right unit) : the number of patent applications filed abroad by Japanese companies; and
Orange (left unit) : the total trade made by Japanese companies with foreign countries.
References
Hyperlink: Patent Administration Annual Report: 2021 Edition－Chapter 2
Jason hung
Patent Counselor of RichIP Group
IV. Implementation of Trademark Examination and Trial in China
Japan Patent Office (JPO) will adjust the related fees of patents and trademarks, and it will be implemented from April 1, 2022. The adjustment content is following (unit: Japanese yen ￥):
- Patent Annual Fees
- Trademark fees
- The related fees of International Patent Applications (Invention patents, Utility model patent)
- The related fees of International Trademarks
References
Jason hung
Patent Counselor of RichIP Group