I. [TW]　Taiwan Supreme Administrative Court Clarifies “Same Design” Standard for Priority Claims in Design Patents

II. [TW]　When “Integrally Formed” Meets Deemed Loss of Novelty: Lessons from a Safety Syringe Patent Dispute

III. [TW]　Is “Direct Substitution” a Criterion for Determining “Lack of Novelty based on Legal Fiction”? —2025 Judgment of the Taiwan Supreme Administrative Court

I. Taiwan Supreme Administrative Court Clarifies “Same Design” Standard for Priority Claims in Design Patents

In Tsai v. Intellectual Property Office, No. 113-Shang(上)-Zi(字)-167 (Supreme Admin. Ct. March 4, 2026), the Supreme Administrative Court upheld the original decision, holding that differences in the number of drawings do not, per se, invalidate a priority claim.

This case arose from a design patent for a “vehicle headlamp” filed by Mercedes-Benz Group AG. The patentee claimed priority from a German application; however, the German priority application included only a perspective view and four orthogonal views (front, top, and right-side views), whereas the subsequent application filed in Taiwan included a perspective view and a complete set of six orthogonal views in accordance with Taiwan’s requirements at the time.

The petitioner argued that because the Taiwan application revealed more views than the German priority case, they were not the “same design” under the Patent Act, and thus the priority claim should be denied.

The Supreme Administrative Court rejected this formalistic approach. The Court clarified that the “same design” requirement for priority does not demand that the drawings and text be identical in every formal detail. Instead, the analysis must turn on whether a person having ordinary skill in the art (PHOSITA) would conclude that the overall visual impression is the same after comparing the subsequent application’s drawings with the full content of the priority document.

The Court noted that as long as the essential design features are sufficiently disclosed in the priority case, the inclusion of additional views in the later application—especially those required by local regulations (such as six-sided views) that do not alter the overall visual impression—will not defeat a priority claim.

This decision provides important practical flexibility and protection for international applicants who must accommodate differing drawing requirements across jurisdictions.

References

Judicial Yuan Judgment System

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

II. When “Integrally Formed” Meets Deemed Loss of Novelty: Lessons from a Safety Syringe Patent Dispute

In IP Administrative Judgment No. 34 of 2025, the Intellectual Property and Commercial Court of Taiwan addressed an invalidation dispute involving a patent directed to a safety syringe and needle hub. The court first restated the basic concept of secret prior art novelty: if a claimed invention is identical to the content disclosed in an earlier-filed but later-published patent application, the invention is not patentable. The term “identical” does not refer only to literal identity, but also covers differences that are merely in the form of expression or technical features that can be directly substituted based on common general knowledge in the relevant art.

In this case, the claims actually disputed by the parties (the plaintiff/patentee and the defendant, the Taiwan Intellectual Property Office) were Claims 1, 3, 4, and 7. With respect to disputed Claim 1, the patentee argued that the integrally formed / integrally connected design of the hub body and latch portion provided greater safety and stability than the separable structure disclosed in Evidence 1, in which an adapter was fitted onto the needle seat, and also reduced the risk of detachment and liquid leakage during removal. The court was not persuaded. It held that, in assessing secret prior art novelty, there is no need to compare whether the substituted overall technical means produces different effects; as long as the differing feature is one that can be directly substituted based on common general knowledge, the two disclosures may still be regarded as identical in substance. Accordingly, because both the separable structure in Evidence 1 and the integrally formed structure of disputed Claim 1 served the function of positioning the safety sleeve, the court concluded that changing the separable fitted structure of Evidence 1 into an integrally formed / integrally connected structure was merely a direct substitution based on common general knowledge. Disputed Claim 1 therefore lacked secret prior art novelty.

As to the remaining disputed claims, the court likewise rejected the patentee’s arguments. For disputed Claim 3, the court found that the feature of “the first end portion pressing against the latch portion” was not substantively different from the “interlocking engagement between the first annular rib and the elastic wing” in Evidence 1. For disputed Claim 4, the court held that the claimed “blocks” and “thinned sections” corresponded to the large ring portion and elastic wings in Evidence 1, and that the differences were merely formal or linguistic. For disputed Claim 7, the court similarly concluded that the integrally connected structure and thinned-section features either constituted direct substitutions based on common general knowledge or reflected only formal differences, while remaining substantively the same as the disclosure of Evidence 1. On that basis, the court found that Evidence 1 was sufficient to show that disputed Claims 1, 3, 4, and 7 all lacked secret prior art novelty, and none of the plaintiff’s arguments was accepted.

This judgment offers an important practical reminder for patent prosecution and patent disputes. If an applicant wishes to include, and later rely on, a particular feature as a meaningful distinction over the prior art, such as the “integrally formed” feature in this case, it is advisable not only to define that feature properly in the claims, but also to explain clearly in the specification the concrete technical effects brought about by that configuration. Otherwise, if the feature merely changes an existing multi-part structure into an integral one, and there is no objective evidence showing a technical significance beyond a direct substitution based on common general knowledge, that difference may still be insufficient to avoid a finding of lack of secret prior art novelty

References

Judicial Yuan Judgment System

Frank Tseng

Patent Counselor of RichIP Group

III. Is “Direct Substitution” a Criterion for Determining “Lack of Novelty based on Legal Fiction”? —2025 Judgment of the Taiwan Supreme Administrative Court

This case involves an invalidation action against a utility model patent titled “Cover of mushroom cultivation bag” (hereinafter the “disputed patent”).  The invalidation petitioner cited Evidence 2 to argue that the disputed patent violated the provision of “lack of novelty based on legal fiction” under Article 23 as applied mutatis mutandis by Article 120 of the Taiwan Patent Act.  The Taiwan Intellectual Property Office (the appellee) rendered a decision to revoke the patent.

Dissatisfied with the decision, the patentee (the appellant) filed an administrative appeal and a subsequent administrative lawsuit, both of which were dismissed by the Taiwan Intellectual Property and Commercial Court (hereinafter the “IPCC”).  Unsatisfied with the decision, the patentee pursued administrative remedies and, after being dismissed by the Taiwan Intellectual Property and Commercial Court (IPCC), appealed to the Taiwan Supreme Administrative Court.

“Lack of novelty based on legal fiction” stipulates that: “Where a utility model claimed in a patent application for utility model is identical to an invention or utility model disclosed in the description, claim(s) or drawing(s) of an earlier-filed patent application for invention or utility model which is laid open or published after the filing of the later-filed patent application, a utility model patent shall not be granted.”

In this administrative litigation, the primary focus was on whether the “through-hole 211” disclosed in Evidence 2 could be directly substituted with Special Technical Feature A of Claim 1 of the disputed patent (i.e., “the edge of the vent hole is connected to the bottom wall”), and whether the “covering or buckling” disclosed in Evidence 2 could be directly substituted with Special Technical Feature C of Claim 7  (i.e., “the breathable sheet is fixed to the joint surface by gluing”).

The Taiwan Supreme Administrative Court cited the Patent Examination Guidelines regarding the “Criteria for Determination of Lack of Novelty based on Legal Fiction” (refer to Part 2, Chapter 3, Section 2.6.4 of the Patent Examination Guidelines).  That is, “identical content” of lack of novelty based on legal fiction means: (1) totally identical, (2) the difference only lies in the literal descriptions or in the technical features which can be directly or unambiguously deduced, (3) the difference resides in the generic and specific concepts of the corresponding technical features, and (4) the difference lies only in the technical features which can be directly substituted based on common general knowledge.

The Taiwan Supreme Administrative Court pointed out that Taiwan adopts the “enlarged novelty” approach for determining “lack of novelty based on legal fiction”, which differs from the concept of “inventive step”.  Specifically, the determination criteria for lack of novelty based on legal fiction encompass the four situations (1) to (4) mentioned above, and “direct substitution” evaluates whether the “technical feature itself” has the same function before and after substitution, rather than considering whether the “overall technical means” produces the same function.

Furthermore, the Taiwan Supreme Administrative Court provided an explanation regarding the “person having ordinary skill in the art” (hereinafter “PHOSITA”).  PHOSITA is a hypothetical person, and their technical capability must be substantiated through external evidence.  In patent litigation practice, the technical classification of the patent and the level of technology at the time of patent filing can both serve as reference materials for determining the capability of this hypothetical person.

In conclusion, the Taiwan Supreme Administrative Court determined that a PHOSITA, based on the common general knowledge at the time of filing, could directly substitute the “through-hole 211” and “covering or buckling” of Evidence 2 with the Special Technical Feature A and C of the disputed patent, and that the IPCC’s determination of the technical level of a PHOSITA was without violation of the law, thereby rendering a judgment of “appeal dismissed.  Therefore, in this judgment, the Taiwan Supreme Administrative Court established that “direct substitution” is a criterion for determining “lack of novelty based on legal fiction” and clarified the rules for determining a PHOSITA and their technical level.

References

Judicial Yuan Judgment System

Jason Hung

Patent Attorney of RichIP Group

I. [TW]　Simpler Application for Patent Annual Fee Reduction from 2026

II. [CN]　Guidelines for Registration of Collective and Certification Trademarks in China

III. [CN]　Amendments to China’s Patent Examination Guidelines (Part I)

I. Simpler Application for Patent Annual Fee Reduction from 2026

Starting January 1, 2026, the Taiwan Intellectual Property Office (TIPO) will introduce simplified procedures for patent annual fee reduction applications to enhance administrative efficiency and user convenience. Eligible patent owners will benefit from a “one-time application, multi-year validity” system, greatly simplifying the process of maintaining patents.

Key Information of the New System

I. Eligible Applicants

• Small and Medium-sized Enterprises (SMEs): Includes certified SMEs from both Taiwan and other countries.
• Foreign Schools: Schools recognized by Taiwan’s Ministry of Education.

(Note: Natural persons and domestic schools that already receive fee reductions are not included in this simplified procedure.)

II. System Effects and Application Methods

• Streamlined Procedures: Eligible applicants only need to apply once for the reduction to take effect in subsequent years, removing the requirement for yearly re-applications as under the old system.
• Two Application Channels:

• 1. At Patent Grant: Select the reduction option directly on the “Patent Certificate Application Form” when paying the certificate and first-year fees.
  2. After Patent Grant: Patent owners may also submit an application at any time during the patent term.

Important Reminders

• Change in Eligibility: If a company no longer qualifies as an SME (e.g., due to expansion), it must proactively notify TIPO and pay the full fee amount.
• Risk of Insufficient Payment: If a reduced fee is paid even though you are not eligible, the payment will be considered insufficient. This could result in the automatic expiration of the patent rights, and TIPO will refund the insufficient payment.

References

TIPO Announces Simplified Procedures for Patent Annual Fee Reduction

TIPO Announces Updates to Related Patent Application Forms

Zhijun Lo

Trademark Administrator of RichIP Group

II. Guidelines for Registration of Collective and Certification Trademarks in China

To reduce costs for applicants, the China National Intellectual Property Administration (CNIPA) has issued these guidelines that provide typical examples of “registrable” and “non-registrable” marks to mitigate the risk of repeated rejections and reapplications.

When applying for a Collective Trademark, the applicant must provide the names and addresses of all collective members, along with Usage and Management Rules. These rules must specify the quality standards of the goods, as well as the liabilities members face if they violate the rules.

I. Examples of Registrable Marks

1. Elemental Innovation

• Use of original text, unique graphics, or a combination thereof that possesses distinctiveness.

2. Marks containing names of administrative divisions at or above the county level.  The following conditions must be met simultaneously:

• Authorization: Obtain authorization from the Government of the place name included (or a higher-level government).
• Acquired Distinctiveness: The mark has gained distinctiveness through long-term use and possesses high visibility/reputation.
• Policy Alignment: The designated goods or services belong to an industry explicitly supported by national policies

3. Marks containing “County-level Place Name + Generic Name of Product + Distinctive Graphic + Full Name of Applicant”In addition to the three conditions mentioned above, the following must also be met:

• Relevancy: The designated goods or services must be identical or closely related to the generic name included in the trademark.
• Non-GI Distinction: Ensure the mark is not perceived as a Geographical Indication (GI), particularly when the product quality does not stem from local natural or human factors.

II. Examples of Non-Registrable Marks

1. Lack of Distinctiveness

• The mark consists solely of a county-level place name and the generic name of the product or service. Without long-term use to acquire distinctiveness, these are considered “non-distinctive” as a whole.

2. Likelihood of Public Misunderstanding

• Origin Misrepresentation: The mark contains a place name, but the applicant’s address or place of operation is outside that area, misleading the public regarding the source of the goods.
• Quality Misrepresentation: The mark contains text or graphics (e.g., “Reliable Food”) that easily mislead the public regarding the quality, raw materials, functions, or uses of the product.
• Confusion with Geographical Indications (GI): If the product’s quality is primarily determined by local natural or human factors (e.g., Han River rice), it should be registered as a Geographical Indication, not a Collective Trademark.

References

CNIPA

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

III. Amendments to China’s Patent Examination Guidelines (Part I)

The China National Intellectual Property Administration (CNIPA) released the Decision of the CNIPA on the Amendments to the Patent Examination Guidelines on November 10, 2025.  The Amendments are intended to fully implement the newly amended Implementing Regulations of the Patent Law and represents an important set of supporting measures in recent years.  The amendments will take effect on January 1, 2026.

The key revisions to the Patent Examination Guidelines may be summarized into three core directions, as outlined below.

 I. Improving protection rules for emerging fields

1. Artificial Intelligence (AI): Improving the examination rules applicable to patent applications in the field of AI technologies, and adding examination examples, in response to the development of AI technologies.
2. Bitstream: Bitstream: The streaming media industry is a key driver for upgrading the cultural industry, and approximately 80% of Internet traffic consists of bitstreams generated after compression by encoding technologies. In response, the Amendments adds special examination rules and drafting requirements for patent applications relating to bitstreams, aligning with the rapid development of the streaming media industry.
3. Plant varieties: Clarifying the definition of plant varieties, expanding the scope of patent-eligible subject matter.

II. Optimizing examination standards and rules to address issues highlighted in practice

1. Same-day dual filings: The Guidelines refine the handling approach for such same-day dual filings (i.e., the same applicant files both an invention patent application and a utility model application for the same creation on the same filing date).

2. inventiveness (often referred to as “inventive step”): Refining details of the inventiveness assessment, and clarifying that technical features that do not contribute to solving the technical problem generally do not render the technical solution inventive.

3. Inventor/applicant identity information: Clarifying requirements for completing inventor identity information, and providing that patent agencies (i.e., patent firms) bear obligations to verify the applicant’s identity information and contact details.

4. Additional filing fees: Adjusting the calculation rules for additional filing fees to reduce the burden on applicants.

5. Refund rules: Adjusting the relevant rules on refunds.

6. Invalidation: Clarifying that an invalidation request will not be accepted where filing the request is not the requester’s true intent, to prevent abuse of the invalidation mechanism.

7. No re-litigation (i.e., “ne bis in idem”): Clarifying that where the grounds and evidence for an invalidation request are substantially identical, the request will not be accepted and will not be examined.

8. Reexamination and invalidation procedures: improving the relevant rules governing reexamination and invalidation procedures.

9. Patent term compensation: Refining rules on patent term compensation. Where a rejection is overturned in reexamination due to new grounds or new evidence presented by the requester, the time consumed by the reexamination procedure is regarded as a reasonable delay in the grant process.

III. Institutionalizing mature practices to better serve innovative entities

1. Rapid examination: Adding provisions relating to rapid examination.

2. Priority claim: Clarifying examination rules applicable where a divisional application is filed without a declaration to claim priority.

3. “Filing date” information on patent certificates for PCT national phase and divisional applications: Clarifying that, for an international application entering the Chinese national phase (PCT) and for a divisional application, the applicant/inventor and other related information recorded on the patent certificate as of the “filing date” shall be determined based on the date of national phase entry or the date of filing of the divisional application, respectively.

4. Submission of amended texts and determination of the examined text in invalidation proceedings: Clarifying rules on (i) the form for submitting amended texts and (ii) the determination of the text to be examined in invalidation proceedings.

In summary, the amendments to the Patent Examination Guidelines are broad in scope.  In addition to responding to examination needs arising from emerging areas such as AI, they also adjust multiple examination standards and procedural rules.  This issue provides a summary of the amendments.  In this newsletter series, we will address each key topic in separate issues; the next issue will focus on the amendments relating to AI / big data and other emerging fields and new forms of business.

References

Decision of the CNIPA on the Amendments to the Patent Examination Guidelines (CNIPA Order No. 84)（Chinese original）

Interpretation of the 2025 Amendments to the Patent Examination Guidelines（Chinese original）

Jason Hung

Patent Attorney of RichIP Group

I. [TW]　Highlights of Taiwan’s IP Filings in Q3 2025: Trademark Applications Reach a Record High; Semiconductor Patent Filings Remain Strong

II. [TW]　Taiwan and Israel Sign MOU for Patent Prosecution Highway (PPH)

III. [CN]　To Enhance Patent Application Quality, CNIPA Issues the Guidelines for Patent Applications of Product Design Involving Graphical User Interfaces (GUI)

I. Highlights of Taiwan’s IP Filings in Q3 2025: Trademark Applications Reach a Record High; Semiconductor Patent Filings Remain Strong

According to the “Q3 2025 Intellectual Property Trends Report” released by the Taiwan Intellectual Property Office (TIPO), trademark applications in Taiwan increased significantly this quarter, reaching the highest single-quarter level in nearly 27 years. While overall patent filings declined slightly, domestic and foreign applicants continued to strengthen their patent portfolios in key technology sectors, particularly semiconductors.

Key observations for this quarter are summarized below:

1. Trademark Applications Surge, Driven by Service and Food & Beverage Sectors

Trademark registration filings reached 27,038 cases in Q3 2025, representing a 16% year-on-year increase and the highest quarterly figure since Q4 1998.

• Applications filed by domestic applicants exceeded 20,000 cases for the first time, with filings concentrated mainly in Class 35 (Advertising and Business Management), Class 43 (Restaurant and Accommodation Services), and Class 41 (Education and Entertainment). This trend reflects continued growth in domestic service-oriented and food and beverage industries.
• Among domestic corporate applicants, Fubon Life Insurance ranked first with 360 filings, followed by Uni-President Enterprises with 137 filings. Among foreign applicants, Luckin Coffee from China ranked first with 71 filings, indicating sustained interest by cross-border brands in strengthening trademark protection in Taiwan.

2. Invention Patent Competition Continues; Semiconductor Sector Remains Resilient

Total filings across the three types of patents reached 17,991 cases, representing a slight year-on-year decrease of 2%. Nevertheless, invention patents remain a key focus for high-technology industries.

• TSMC filed 283 invention patent applications, maintaining its position as the top domestic applicant. TSMC has ranked first continuously since Q3 2016, marking ten consecutive years at the top.
• Foreign invention patent filings were led by Japan (3,150 cases) and the United States (1,825 cases). Notably, U.S. filings have recorded positive growth for two consecutive years. Applied Materials, a major semiconductor equipment supplier, ranked first among foreign applicants with 302 filings, while Shin-Etsu Chemical of Japan also reached a record high for a single quarter. These figures underscore Taiwan’s critical role in the global semiconductor supply chain.

3. Design Patents: Notable Growth from European Luxury Brands

Overall design patent filings remained stable; however, European fashion and luxury brands demonstrated strong growth momentum.

Design patent filings from Switzerland and France increased by more than 50% year-on-year. French luxury brand Louis Vuitton entered the top five applicants for the first time, reaching a record high, while Swiss jewelry brand Harry Winston also ranked among the leading applicants. This trend reflects a growing emphasis by international luxury brands on protecting product design rights in the Taiwanese market.

References

TIPO’s Q3 2025 IPR Statistics Report

Frank Tseng

Patent Specialist of RichIP Group

II. Taiwan and Israel Sign MOU for Patent Prosecution Highway (PPH)

Taiwan and Israel have signed MOU for Patent Prosecution Highway (PPH MOTTAINAI) and intellectual property cooperation during the 15th Taiwan–Israel Economic and Technical Cooperation Conference. This marks the establishment and strengthening of the cooperation framework between the two countries in the field of intellectual property. The Taiwan–Israel PPH was scheduled to take effect on January 2, 2026.

Israel is the eighth partner in Taiwan’s PPH system, following the United States, Japan, Spain, South Korea, Poland, Canada, and France. By sharing search and examination results for patent applications belong to the same invention, both offices can reduce duplicate examination work and improve examination efficiency. In addition, such cooperation helps build a clearer cross-border collaboration framework for patent filing and contributes to international patent management for applicants.

References

TIPO

Zhijun Lo

Trademark Administrator of RichIP Group

III. To Enhance Patent Application Quality, CNIPA Issues the Guidelines for Patent Applications of Product Design Involving Graphical User Interfaces (GUI)

Our firm has summarized below the key points that applicants should note:

Which GUI designs may qualify as protectable subject matter under design patents?

• A GUI must be applied to a specific product (such as mobile phones, tablets, home appliances, or in-vehicle devices). Icons or images existing independently, without a product carrier, are not eligible subject matter.
• The design must be related to human–computer interaction, such as clicking, swiping, or operational feedback.
• Game interfaces and display content unrelated to human–computer interaction (e.g., wallpapers or boot-up screens) are not eligible subject matter.
• When a partial design is claimed, the GUI portion must constitute a relatively independent section and a complete design unit.

Other compliance reminders:

• When a GUI includes maps, logos, portraits, trademarks, or copyrighted content, special attention should be given to prior rights and adherence to the laws and regulations of the People’s Republic of China..
• The “content images” (such as photographs, videos, or real-time imagery) are, in principle, not be involved in the scope of protection, and require special handling in drawings.

Conclusion

Although these Guidelines are a reference document, they may reflect CNIPA’s practical approach to examining GUI-related design patents.
If you have questions about whether a specific product or GUI design is suitable for filing a Chinese design patent application, please feel free to contact us for further discussion.

References

CNIPA

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

I. [CN]　CNIPA Has Promulgated the “Guidelines for Combining Designs into a Single Design Patent Application”

II. [WIPO]　WIPO Global Innovation Index 2025: New “Venture Capital” Indicator Reshapes Ranking of Top 100 Innovation Clusters

I. CNIPA Has Promulgated the “Guidelines for Combining Designs into a Single Design Patent Application”

To help applicants better understand the procedures related to design patent applications and to promote high-quality design patent development, the China National Intellectual Property Administration (CNIPA) promulgated the Guidelines for Combining Designs into a Single Design Patent Application in October 2025.

The Guidelines systematically outline the applicable circumstances and key considerations for combing designs into a single design patent application, clarifying which types of designs may be filed as one design patent application, along with criteria and illustrative examples for different types of combined filings.

In brief, the four types of designs shown on the right side of the diagram below may be filed as a combined application:

1. First Type: A common single product with a single design;
2. Second Type: Multiple components that are structurally connected and form one product when assembled;
3. Third Type: A single product with multiple similar designs; and
4. Fourth Type: A set of items of a product belonging to the same category, customarily sold or used together.

Among these, the Guidelines mainly focus on the key considerations and examples related to Types 3 and 4.

Key points to note:

• Each application may include no more than 10 similar designs;
• The number of items within a set of products is not theoretically limited, but each must represent an overall design (partial designs are not allowed);
• A set design application should not include similar designs of individual items; and
• Multiple component products may include similar designs under the same application.

For more details, please refer to the attached document on the website.

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

II. WIPO Global Innovation Index 2025: New “Venture Capital” Indicator Reshapes Ranking of Top 100 Innovation Clusters

The World Intellectual Property Organization (WIPO) has released its influential 2025 Global Innovation Index (GII) Cluster Report, which now incorporates Venture Capital (VC) transactions alongside traditional metrics like PCT patent filings and scientific publications. This update highlights the critical role of commercialization and investment flow in driving innovation.

Key Highlights for China, Hong Kong and Taiwan

• Shenzhen–Hong Kong–Guangzhou rises to No. 1 globally, supported by strong VC activity and high contributions to PCT patent filings and scientific output (nearly 9% of global PCT filings.)
• Beijing remains a major innovation hub, ranking No. 4, driven by the world’s highest volume of scientific publications (4% of global total.)
• Shanghai–Suzhou places No. 6, reflecting its balanced strength across patents, research, and VC activity.
• Taipei–Hsinchu ranks No. 41, with notable contributions from PCT filings and semiconductor-related R&D. According to WIPO, MediaTek is now the top PCT applicant in the Taipei–Hsinchu cluster, surpassing Hewlett-Packard.

Brief Conclusion

As innovation becomes increasingly concentrated within leading regional clusters, strong and forward-looking intellectual property protection is essential, both to safeguard innovative output and to ensure competitiveness in global technology ecosystems.

References

Hyperlink: TIPO

Hyperlink: WIPO

Frank Tseng

Patent Specialist of RichIP Group

I. [WIPO]　Notice of Adjustment to PCT International Phase Fees in 2025

II. [TW]　Early and Comprehensive Trademark Layout Is Strongly Advised

III. [TW]　TIPO Revised “Examination Guidelines for Non-Traditional Trademarks” — Effective Date: August 1, 2025

IV. [HK]　Hong Kong and WIPO Sign MOU on WIPO Lex-Judgments Database

V. [TW]　TIPO Launches “Image-Based Search System for Domestic Design Patents (Beta)”

I. Notice of Adjustment to PCT International Phase Fees in 2025

According to the announcement published by the World Intellectual Property Organization (WIPO), effective from July 1, 2025, the international filing fee and the handling fee for the PCT Demand (request for international preliminary examination) submitted to the China National Intellectual Property Administration (CNIPA) will be charged based on the revised official fee schedule as outlined below.

In addition to the above-mentioned fees, other official fees independently charged by the CNIPA, such as the search fee, will remain unchanged.

Jason Hung

Patent Attorney of RichIP Group

II. Early and Comprehensive Trademark Layout Is Strongly Advised

Content:
Trademark systems vary from country to country. Roughly 80% of nations adopt the first-to-file principle, including China, Japan, Korea, the EU, and Taiwan. A few countries, such as the United States follow the “first-to-use” principle which gives significant weight to actual use of trademark or market recognition (well-known) in determining trademark rights. Consequently, filing trademarks as soon as possible is the most effective way to minimize the risk of disputes in most countries.

A well-known example is Ryohin Keikaku Co., Ltd. (hereinafter “Japan MUJI”) and its trademark dispute in China for the mark of “” belonging to Class 24.  Although Japan MUJI has began trademark application for the mark of “” in China from1999, covering Classes 3 (cosmetics), 9 (calculator), 16 (stationery), 20 (furniture), 21 (household utensils), 25 (clothing), 26 (accessories), 35 (retail services), and 41 (publishing and educational services). However, the trademark application did not include Class 24 (textiles, towels, bed sheets, and quilts).

In 2001, Hainan Nanhua Industrial & Trade Co. applied for and obtained trademark registration for the mark of “” in Class 24, which was later assigned (in 2004) to Beijing Cottonfield Textile Co., Ltd (hereinafter “Beijing Cottonfield”).  After publication of the trademark, Japan MUJI filed an opposition, but during a series of legal battles and proceedings the Supreme People’s Court of China finally held that Japan MUJI’s reputation in China at the time was limited, and affirmed the validity of Beijing Cottonfield’s trademark registration based on the first-to-file rule.

After that, Beijing Cottonfield discovered that Japan MUJI had been using the mark of “無印良品” on products such as blankets, bed covers, and towels, and filed an infringement lawsuit. After the first and second instances, the Beijing High People’s Court upheld the original judgment that Japan MUJI indeed infringed the registered trademark. As a result, although Japan MUJI could continue using “MUJI” in English in goods belong to Class 24, it was prohibited from using the Chinese name “無印良品” in that class.

Afterward, Japan MUJI continued to file new trademark applications for the mark of “無印良品” in Class 24 and attempted to invalidate Beijing Cottonfield’s trademark registration by claiming bad-faith registration. However, Japan MUJI losing the first and second-instance administrative litigation, and its petition for retrial was dismissed by the Supreme People’s Court in June 2025.

This case points out the importance of a comprehensive trademark layout, especially for those running business internationally. In the countries under first-to-file principle, companies cannot rely solely on their global reputation to extend the trademark rights to cover undesignated classes, especially when the evidence may not be sufficient to prove that the mark was already well known “at that time” and “in that jurisdiction.” Once a key class has been missed for trademark registration, extra efforts in litigation, acquisition, or cross-licensing are often necessary to extend commercial use of the same mark to the missed class.

From a practical standpoint, we suggest conducting a preliminary search to evaluate the likelihood of rejection, followed by trademark applications covering current core goods and services based on the Nice Classification. Classes with a high potential of future expansion can be reserved for subsequent filings.  As the business grows, a “variant-symbol” approach may be adopted—registering variants such as abbreviations, nicknames, phonetic transliterations, or localized names (for instance, “麥當當(a Chinese nickname for McDonald’s),” “珍煮母 (an abbreviated Chinese rendering of TRUEDAN),” or “史塔巴克斯 (a localized transliteration of STARBUCKS)” as defensive marks)—to strategically strengthen protection and avoid unnecessary costs arising from future trademark disputes.

References

Hyperlink: TIPO

Hyperlink: TIPO

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

III. TIPO Revised “Examination Guidelines for Non-Traditional Trademarks” — Effective Date: August 1, 2025

Content:
Before the previous amendment to Trademark Act, Paragraph 4 of Article 30 provided that registration shall not be permitted unless a disclaimer of non-exclusive use for functional portions of a trademark design is made. To avoid that functional portions of a trademark design affects the overall assessment of likelihood of confusion, it is now stipulated that registration shall not be permitted unless functional portions of a trademark design are depicted in dashed lines. For trademarks containing functional portions that cannot be represented in dashed lines (such as non-visual marks including sound or scent marks), the applicant must expressly declare that such portions are not part of the trademark instead.

To be in line with the amendment, the “Examination Guidelines for Non-Traditional Trademarks” have been revised accordingly. The key points of the revision are summarized as follows:

1. Specifying the principles for handling functional portions within a trademark design;
2. Specifying that when dashed lines are used in the trademark representation, such use shall be explained in the trademark description;
3. Specifying that the main distinctive features protected under non-traditional trademarks (e.g., color, three-dimensional shape, motion, hologram, and sound) are different from the two-dimensional features of traditional trademarks (e.g., words, figures, and symbols);
4. Specifying that the applicant shall provide a trademark description explaining the three-dimensional shape to ensure clarity in the three-dimensional form of a trademark; and
5. Providing recent cases and revising the examples for trademark descriptions as references to meet practical examination needs.

Example:
Trademark Description:

“This mark is a three-dimensional trademark exhibiting the exterior shape of a product packaging container, as shown in the trademark design. It is composed of a three-dimensional bottle, a three-dimensional cap and a word . The cap and neck are covered with a black seal.  The top of the cap bears the word of ‘HENNESSY’ and a logo of ‘a hand holding an axe’.  The neck seal is printed with the word of ‘HENNESSY’ in slanted and evenly spaced lettering.  The front of the bottle features an embossed logo of ‘a hand holding an axe’ and a label bearing the word of ‘HENNESSY’ with gold floral patterns. The lower portion of the bottle is slightly concave inward and then connect to an outwardly protruding base. The portions shown by dashed lines—the cap and bottle shape—are not part of the trademark.”

References

Hyperlink: TIPO

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

IV. Hong Kong and WIPO Sign MOU on WIPO Lex-Judgments Database

Hong Kong and WIPO signed a Memorandum of Understanding (MoU) concerning the “WIPO Lex Judgments” database on September 1, 2025, with the aim of enhancing information sharing, with a view to jointly building a more connected and informative global intellectual property community.

The WIPO Lex Judgments database provides free, open access to leading judicial decisions relating to IP from around the world, which currently includes more than 2,200 judgments from over 40 jurisdictions.  Under this MoU, Hong Kong will contribute landmark IP judgments to the WIPO Lex Judgments database, thereby allowing judges, IP practitioners, policymakers and researchers around the world to better understand and engage with Hong Kong’s IP-related judicial judgments, while at the same time showcasing the quality of Hong Kong’s jurisprudence.

At the signing ceremony, the Financial Secretary of Hong Kong, Mr. Paul Chan, remarked that Hong Kong’s participation in the database carries special significance.  He further emphasized that Hong Kong, the only jurisdiction in China that practices the common law system and operates in both Chinese and English, has earned broad international recognition for its protection of intellectual property rights.  The city has become a trusted venue for resolving IP disputes involving both Chinese and international parties, and its judicial decisions serve as valuable references for the global legal community.

This signing marks a significant step in strengthening Hong Kong’s collaboration with the WIPO.  It is expected to enhance the transparency of Hong Kong’s IP regime on a global scale and reinforce the city’s role in the international exchange of judicial precedents.  Moreover, it may further boost the confidence of international enterprises and IP owners in investing and conducting innovation activities in Hong Kong.

References：https://www.info.gov.hk/gia/general/202509/01/P2025090100454.htm?fontSize=1

Jason Hung

Patent Attorney of RichIP Group

V. TIPO Launches “Image-Based Search System for Domestic Design Patents (Beta)”

Taiwan Intellectual Property Office (TIPO) has launched an “Image-Based Search system for Domestic Design Patents (Beta)” from 2025 to enhance the efficiency and convenience of searching design patents. The system includes design patent cases which have published since 2013, and enable users to quickly identify and search out similar designs by intelligent image recognition approach. This new approach breaks through the limitation of traditional text-based searches and provides a more intuitive and precise search mode, which is useful for research, creation and management of rights.

Key features of the new search system are shown as follows:

Image Upload and Comparison: when users upload an image, the system automatically detects and highlights the design area with a red frame.

Partial Image Search: users can crop specific portions of an image and search for the cropped portions.

Integration with LOC Classification: the system supports image searches combined with International Classification for Industrial Designs (LOC) to search for specific fields quickly.

Multiple Filtering Options: users can further filter the search results by inventor, applicant, publication year, and LOC classification, etc.

The system can save time on searching prior design patents and enhance the precision of searching as compared with traditional text searching, and therefore TIPO encourage people to utilize it more.

References

Hyperlink:TIPO

Zhijun Luo

Paralegal of RichIP Group

Rich IP & Co. (under RichIP Group) was again surveyed by ASIA IP as one of the dominant IP firms in Taiwan in 2025.

Overview of Rich IP & Co.:

Overview of IP Expert Russell Horng:

Overview of IP Expert Jason Hung:

Overview of IP Expert Cross Liu:

Rankings of Rich IP & Co. in 2025 are listed below:

We are pleased to inform you that on February 21, 2025 (Friday), RichIP will move to a new location. Starting on February 21, 2025 (Friday), our new address will be: 5F., No. 218, Sec. 2, Jinshan S. Rd., Da’an Dist., Taipei City 106, Taiwan.

Please update your records accordingly. Our e-mail address, telephone number and facsimile number will remain unchanged.

Our office will be closed temporarily from February 20, 2025 (Thursday), 9:00 AM to February 21, 2025 (Friday), 15:00 PM for the Office Relocation. If you have any urgent requirement from us, please let us know well before the end of February 19, 2025 (Wednesday).

Please let us know if you have any questions. Thank you.

Best regards,

I. [WIPO]　Trends Analysis of WIPI in 2023 and Trademark Applications filed in Taiwan in the past years

II. [TW]　In 2023, Taiwan’s acceptance of invention patents continued to grow by 1.2%, and WIPO’s acceptance of PCT invention patents turned negative for the first time since 2009

III. [TW]　TIPO Offers New Examination Services for Design Patents

IV. [TW]　 Pilot Operation Program for Active Patent Examination in New Industries

V. [TW]　New System for Telephone Communication with External Examiners and Remote Video Interview

I. Trends Analysis of WIPI in 2023 and Trademark Applications filed in Taiwan in the past years

WIPO released the World Intellectual Property Indicators 2023 (WIPI 2023) Report on November 6, 2023, as usual, it converted the “Nice Classification of Goods and Services” into the top ten industry categories and applied a specific weight calculation method for analysis.

Comparing the data of Taiwan in 2022 and WIPI 2023 (based on the records of 2022), the highlights are as follows:

1. The number of global trademark applications in 2022 has ended the 12 consecutive years of growth since 2009. After the surge in applications related to the COVID-19 epidemic in the previous two years, the numbers of trademark applications and trademark registrations have dropped sharply by 15.7% and 14.5%, respectively.  It has returned to more normal levels, but the caseload is three and a half times as compared with that of 2008.

2. After weighted, China still ranks first with more than 7,513,504 trademark applications (including 7,304,080 trademark applications filed by Chinese entities and 209,424 trademark applications filed by foreign entities) in 2022, nearly 10 times more than the United States with 767,375 trademark applications (including 494,216 trademark applications filed by US entities and 273,159 trademark applications filed by foreign entities) in 2022. Taiwan received 122,230 trademark applications (including 86,794 trademark applications filed by Taiwanese entities and 35,436 trademark applications filed by foreign entities) in 2022, ranking the 18th in the world.  Taiwan has granted 102,107 trademark registrations in 2022, also ranking the 18th in the world.

The top four industry categories for Taiwan’s trademark applications filed by foreign applicants are the same as those for WIPO non-resident applications, which are “Research and technology (including Nice Classifications 09, 38, 42, 45),” “Health and medical care (including Nice Classifications 03, 05, 10, 44),” “Clothing and accessories (including Nice Classifications 14, 18, 22, 23, 24, 25, 26, 27, 34)” and “Leisure and education (including Nice Classifications 13, 15, 16, 28, 41)” in order.  Compared with the international average, the proportion of trademark applications filed by foreign applicants in Taiwan in the field of “health and medical care” is significantly higher than that disclosed in WIPO data.  It appears that foreign applicants pay more attention to Taiwan’s development potential in the field of “health and medical care”.

References

Hyperlink: Analysis from TIPO

Hyperlink: WIPI in 2023

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

II. In 2023, Taiwan’s acceptance of invention patents continued to grow by 1.2%, and WIPO’s acceptance of PCT invention patents turned negative for the first time since 2009

The Taiwan Intellectual Property Office (TIPO) has announced the “Comparative Analysis of the Trend of Invention Patent Applications Accepted by WIPO and the TIPO in 2023”.  The following are some of the highlights in the analysis.

In 2023, WIPO (World Intellectual Property Organization) accepted around 272,600 PCT (Patent Cooperation Treaty) invention patent applications, with an annual decrease of 1.8%, and the ending of consecutive growth for 13 years.  By contrast,, the TIPO accepted 50,854 cases, with an annual increase of 1.2%.  The details can be found in Figure 1.

In 2023, the most of the invention patent applications accepted by WIPO and the TIPO belong to “computing technology” and “semiconductors” respectively.  In 2023, “computing technology” (10.2%) was the largest technical field for invention patents accepted by WIPO, followed by “digital communications” at 9.4% and “electronic mechanical energy devices” at 7.9%.  The TIPO had the highest proportion of “semiconductors” at 15.0%, followed by “computing technology” at 9.1% and “electronic mechanical energy devices” at 6.1%.  The details can be found in Figure 2.

Regarding technology proportions of WIPO’s accepted invention patent applications among the major countries (regions), mainland China has the highest proportion in “Digital Communications” at 15.6%, the United States has the largest proportion in “Computing Technology” at 12.9%, and Japan and Germany has the highest proportion in “Electronic Machinery Energy Devices” at 11.3% and 11.8 % respectively, while South Korea places equal emphasis on “Electronic Machinery Energy Devices” and “Digital Communications” (both 11.2%).  By contrast, regarding technology proportions of TIPO’s accepted invention patent applications, Taiwan, mainland China, the United States, Japan, and South Korea all has the highest proportion of “semiconductors”, accounting for 12.5% to 25.7%. The details can be found in Figure 3.

In 2023, among the top ten applicants for WIPO invention patent application publications, Huawei from mainland China ranked first for seven consecutive years with 6,494 cases, followed by Samsung Electronics of South Korea (3,924 cases) and Qualcomm of the United States (3,410 cases).  By contrast, among the top ten applicants for TIPO invention patent application publications, TSMC has topped the list for five consecutive years with 1,582 pieces, followed by Applied Materials (794 cases), South Korea’s Samsung Electronics (747 cases), and Qualcomm (695 pieces). The top ten applicants of both of WIPO and TIPO include South Korea’s Samsung Electronics and US’s Qualcomm.  The details can be found  in Figure 4.

In 2023, the majority of WIPO’s top ten applicants focused on “digital communications,” while the majority of the TIPO’s top ten applicants focused on “semiconductors”.  Regarding South Korea’s Samsung Electronics, it primarily focused on “digital communications” in WIPO cases, but it primarily focused on “semiconductors” in TIPO cases.  By contrast, American Qualcomm primarily focused on “Digital Communications” in both WIPO cases and the TIPO cases.  The details can be found in Figure 5 and Figure 6.

III. TIPO Offers New Examination Services for Design Patents

The Taiwan Intellectual Property Office (TIPO) is expanding the range of examination services for design patents, including options for accelerated examination and simultaneous adjustment of the deferred examination period for design patents:

I. Accelerated Examination: The TIPO has begun accepting applications for accelerated examination of design patents from September 1, 2023. Applicants who meet one of the following criteria are eligible to receive examination results within two months of submitting a complete application:

1. Third party commercial exploitation, including product photos, product catalogs, newspapers and magazines with starting time.

2. Design has been recognized by prestigious international or national design awards. The TIPO recognizes the following design awards as prestigious: Taiwan’s Golden Pin Design Award, Germany’s iF Design Award, Red Dot Design Award, Japan’s Good Design Award, and the United States’ International Design Excellence Awards (IDEA).

3. Applications from new startup enterprises, which has been established for less than 8 years. Maximum of 3 applications per year.

II. Deferred Examination: To accommodate the commercialization timelines for foreign designs in Taiwan, the TIPO has amended regulations for the deferred examination period for design applications.  A request for deferred examination can be submitted at the same time as the filing of the design patent application or within one year after the filing date (but it must be submitted before receiving the office action or the decision of patent examination.  Regardless whether priority rights are claimed or not, the deferred examination date is now uniformly be set within one year from the filing date of Taiwan application.

References

Hyperlink:  TIPO

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

IV. Pilot Operation Program for Active Patent Examination in New Industries

I. Qualified Applicants

An application is filed by a new start-up company.

1. The company should be the applicant of the invention patent application.
2. A new start-up company refers to that has been registered and established under Taiwan’s company law or foreign legal organizations for less than 8 years.\
3. Calculation method for companies established less than 8 years:It refers to less than 8 years from the date of establishment of a company to the date of the request for program.

II. Eligible patent applications:

1. Invention patent application: an agent is appointed when applying.
2. Submitted time: after the TIPO notices that the substantive examination is about to take place, but before receiving the first office action.

III. How to apply:

1. Application must be made electronically.
2. Fill in the application form:
   State the name of the applicant and the date of company establishment.

IV. Number of cases that can be accepted:

• The same new start-up company: maximum 5 applications per year.
• The TIPO: The maximum number of cases accepted is 6 per month.

V. Application time point and examination process:

• Appoint an agent to apply for a patent application.

↓

• A substantive examination is about to be carried out.

↓

• Apply electronically for the New Industry Active Review Project

1. It must be less than 8 years from the establishment of the company to the application for the plan
2. Before receiving the first office action

↓

• the 1st month
  The TIPO issues interview information
  Search report and other reasons for not granting a patent

↓

• the 2nd month
  Conduct proactive interviews
  Provide suggestions for amendments/corrections

↓

• the 3rd month
  applicant
  Submit an amendment or response

↓

• the 4th month
  Notice of Office Action / Notice of Allowance

The average implementation time from applying for this program to the applicant obtaining a patent or receiving an office action is within 4 months.

References

Hyperlink:  TIPO

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

V. New System for Telephone Communication with External Examiners and Remote Video Interview

Starting September 1, 2024, the Taiwan Intellectual Property Office (TIPO) has introduced the Optimization Program for Telephone Communication and Remote Video Interviews with External Examiners on a pilot basis.

Invention patent applicants can now use the TIPO’s three-way conference call mechanism (with specified software, e.g. Cisco Webex Meetings) to facilitate communication and exchange of opinions between the applicant side, the external examiner, and the TIPO examiners in non-public places.

This initiative is designed to enhance the quality of patent applications and improve the efficiency of the examination process.

References

Hyperlink:  TIPO

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

Rich IP & Co. (under RichIP Group) was again surveyed by ASIA IP as one of the dominant IP firms in Taiwan in 2024.

Overview of Rich IP & Co.:

Overview of IP Expert Russell Horng:

Overview of IP Expert Chien-Chung Yuan:

Overview of IP Expert Cross Liu:

Rankings of Rich IP & Co. in 2024 are listed below:

This article was also published in “Asia IP INFORMED ANALYSIS,” Volume 15 Issue 9, Pages 30-33, September 2023.

Means-plus-function language – also known as MPF language –is a double-edged sword in Taiwan, sometimes helping and sometimes hurting a patent claim, depending on how the applicant uses it. Dr. Cross Liu explains how to weigh the pros and cons of using MPF language.

Taiwan’s patent regime has been adopting means (or step)-plus-function (“MPF” for short) language for more than 20 years. MPF language is known as a special way to describe an element in a claim for a combination, and more specifically, it enables the element to be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof. From the practical perspective, there are two important aspects which need to be considered regarding MPF language: one is how to recognize whether a claim uses MPF language, while the other is how to judge whether a claim using MPF language is definite. This article will draw your attention to the highlight that the Taiwan Intellectual Property Office (TIPO) and the jurisdictional courts have divergent opinions on the two aspects.

Inconsistency in recognizing whether a claim uses MPF language

Same as other patent regimes, the TIPO must follow the Patent Act, the Enforcement Rules of the Patent Act and the Examination Guidelines for Patents during the prosecution of a patent application. The Patent Act is actually silent about MPF language, and MPF language is primarily stipulated in the Enforcement Rules, Article 19, Paragraph 4, as follows:

An element of a claim, pertaining to an invention being a combination of a plurality of elements, may be expressed by means-plus-function language or step-plus-function language. Such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

This article makes a limitation to the usage of MPF language that the claimed invention must be a combination of a plurality of elements, which means that the claim including only one single element shall not use MPF language. The Enforcement Rules do not specify how to recognize whether an element of a claim is described in MPF language, whereas the Examination Guidelines provide a determination rule including three conditions as follows:

1. ) Whether an element of a claim uses the expression of “means for” or “step for”?
2. ) Whether the element includes a specific function?
3. ) Whether the element does not include structure, material, or acts in support of the specific function?

Under the determination rule, an element of a claim shall not be regarded as being described in MPF language unless the description form of the element meets all of the above three conditions. That is, as MPF language is successfully adopted to an element recited in a claim, the element shall basically be expressed as a “means for” or “step for” performing a specific function without the recital of structure, material, or acts in support thereof.

In practice, the TIPO tends to follow the applicant’s intention more than the description form of an element. The author’s experiences tell that the TIPO rarely concludes that an element is described in MPF language without the applicant’s confirmation or acquiescence, even if the TIPO feels or suspects that the description form of the element has met all of the three conditions.

In contrast, the jurisdictional courts (i.e., the Taiwan Supreme Administrative Court and the Taiwan Intellectual Property and Commercial Court) almost always focus on whether the description form of an element meets all of the three conditions, regardless of the applicant’s intention. In other words, the jurisdictional courts may conclude that an element is described in MPF language although the applicant had no such intention, and vice versa.

On the other hand, the TIPO strictly operates by the determination rule, whereas the jurisdictional courts uses the same rule in a looser way. Alternatively, we can say that the TIPO follows the form of the determination rule, while the jurisdictional courts follow the substance of the same. For example, as an element uses the expression of “unit for” instead of “means for”, the TIPO may not identify that the first condition is met, but the jurisdictional courts may.

Inconsistency in judging whether a claim using MPF language is definite

Under the Enforcement Rules, Article 19, Paragraph 4, a claim using MPF language shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Nevertheless, the Patent Act and the Enforcement Rules do not stipulate whether failure of describing the corresponding structure, material, or acts in the specification will make the claim indefinite. To some extent, this is why the TIPO and the jurisdictional courts have divergent opinions on determining whether a claim using MPF language is definite.

The definiteness requirement is necessary for both of the claim(s) and the specification and has been stipulated in the Patent Act, Article 26, the first and second paragraphs, as follows:

1. ) A specification shall provide a description [for the claimed invention] in a definite and sufficient manner for a person ordinarily skilled in the art to understood and carried out.
2. ) Claim(s) shall define the claimed invention, and more than one claim can be included therein. Each claim shall be described in a definite and concise manner and be supported by the specification.

The Examination Guidelines made by the TIPO further specify that if the specification does not describe the corresponding structure, material, or acts for the specific function described in MPF language, a person ordinarily skilled in the art is unable to determine the corresponding structure, material, or acts, and such a situation will make the concerned claim indefinite. Because the patent examiners of the TIPO must be constrained by the Examination Guidelines, from the perspective of the TIPO, failure of describing the corresponding structure, material, or acts in the specification indicates that the concerned claim is indefinite.

The jurisdictional courts, however, have different opinions. Firstly, the jurisdictional courts are not bound by the Examination Guidelines, which means that the jurisdictional courts can judge by themselves whether failure of describing the corresponding structure, material, or acts in the specification makes the concerned claim indefinite.

Further, the Taiwan Supreme Administrative Court has affirmed, in its judgments (e.g., No. 355 in 2013, and No. 149 in 2016), that the requirement of describing the corresponding structure, material, or acts in the specification is made only for the sake of claim construction, and failure of describing the corresponding structure, material, or acts in the specification does not necessarily make the concerned claim indefinite. The Taiwan Supreme Administrative Court also expressed that the definiteness of a claim only depends on whether a person ordinarily skilled in the art can clearly understand the claimed invention based on the whole description of the specification, and this rule is fixed no matter whether the concerned claim uses MPF language.

Thus, from the perspective of the jurisdictional courts, a claim using MPF language may still be deemed definite as long as a person ordinarily skilled in the art can clearly understand the claimed invention, even if the specification fails to describe the corresponding structure, material, or acts for the specific function recited in the claim.

Takeaways

1. The specification had better somehow and somewhat provide descriptions about structure, material, or acts of each element of a claim, no matter whether the applicant intends to use MPF language in the claim or not.

If intending to use MPF language in the claim, the applicant, of course, shall describe the corresponding structure, material, or acts for the specific function of each element as much as possible. In doing so, the claim may more easily pass the inspection of the definiteness requirement, as either the TIPO or the jurisdictional courts are in charge. In addition, the more description for the corresponding structure, material, or acts the specification provides, the broader scope the concerned element can covers, once the TIPO or the jurisdictional courts conclude that the concerned element is described in MPF language.

On the other hand, it would be better still to provide some descriptions in the specification about structure, material, or acts of each element of a claim, even if the applicant does not have any intention to use MPF language in the claim. Such descriptions leave the claim a better way out from being indefinite.

If an amendment is applicable, the descriptions will enable the applicant to add the appropriate structure, material, or acts into the claim to help the claim escape from MPF language. If an amendment is not applicable, the descriptions may enable the applicant to clearly prove that the specification has described the corresponding structure, material, or acts for the specific function recited in the claim. In either situation, the applicant may accordingly have a good basis to emphasize that the concerned claim is definite enough based on the descriptions.

2. The applicant needs to carefully weigh up the pros and cons of MPF language before using it.

MPF language is an inherently indefinite way to describe an element of a claim. As an element of a claim is described in MPF language, the only definite part is the function recited in the claim, which means that a person ordinarily skilled in the art can only understand what the element does, but cannot understand how the element performs it. That is why a claim using MPF language shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

In other words, the protection scope of a claim using MPF language is sensitive to the description of the specification. As a result, using MPF language will put a more burden on the applicant about describing the claimed invention in the specification.

In return, MPF language enables the applicant to claim an invention in a concise and simple manner, and this is useful for the applicant to claim a complicated or diverse invention. In addition, MPF language can keep a claim from including an element which is defined and limited to the specific structure, material, or acts. Instead, the element described in MPF language will be limited to the specific function recited in the claim, which means that the claim will not cover the functions similar to the specific function recited therein.

More specifically, if the claimed invention needs a specific function which can be performed by more than one feasible mechanism (i.e., structure, material, or acts), MPF language may be adopted to avoid that the claimed invention is limited to only one of the feasible mechanisms. The “specific” function will exclude other similar functions from the claim construction. For example, as the function recited in the claim is “detachable connection”, the claim will not be construed to cover other kinds of connection, such as “fixed connection”.

In contrast, if the claimed invention needs a specific mechanism (i.e., structure, material, or acts) which can perform more than one feasible function, MPF language may not be adopted to avoid that the claimed invention is limited to one of the feasible functions. The “specific” mechanism will exclude other similar mechanisms from the claim construction. For example, as the specific material recited in the claim is “Iron (Fe)”, the claim will not be construed to cover other kinds of materials, such as “Cobalt (Co)”.

In a word, MPF language is a double-edged sword, which may help or hurt the claims depending on how the applicant uses it. Accordingly, the applicant needs to carefully weigh up the pros and cons of MPF language before using it.

Conclusions

The inconsistency between the TIPO and the jurisdictional courts may create a loophole for opportunists, and appropriate harmonization is therefore necessary. Before that happens, though, the takeaways mentioned above may be helpful in reducing the possible negative effects caused by the inconsistency.