I. [CA] Change to Fees of Designating Canada in International Application and Registration of Industrial Designs

II.[TW] Industry Collaboration Patent Examination Interview Pilot Program

III.[TW] Priority Document Exchange (PDX) for Design Patent Applications

IV.[US] US Trademark Modernization Act Will Be Implemented

I. Change to Fees of Designating Canada in International Application and Registration of Industrial Designs

After consultation with the Canadian Intellectual Property Office (CIPO), the Director General of World Intellectual Property Organization (WIPO) has modified the amounts of the individual designation fee payable in connection with an international application in which Canada is designated, and in connection with the renewal of an international registration designating Canada, as listed below:

These new amounts will take effect on January 1, 2022.

References

Hyperlink: WIPO’s Announcement

Dr. Cross Liu

Executive Manager of RichIP Group

II. Industry Collaboration Patent Examination Interview Pilot Program

Taiwan Intellectual Property Office (TIPO) has recently announced a new pilot program named “Industry Collaboration Patent Examination Interview Pilot Program,” which will last for one year from November 1, 2021.

Beneficiaries

Any applicant who has filed an invention patent application involving “prospective technologies” and has been notified by the TIPO that the application will undergo substantive examination, but has not yet received any Office Action (examination opinions), can benefit from the pilot program.

Scope of Prospective Technologies

The prospective technologies include, but not limited to, stem cell and regenerative medicine, informatics for medical care, micro-LED display, quantum dot solar cell, neural network, quantum information, 3nm semiconductor fabrication, precision engineering for probe of chip package, twisted bilayer graphene, the third-generation semiconductor material, Artificial Intelligence, Internet of Things, Big Data, blockchain, 3D printing, the fifth-generation mobile network.

Implement details

1. Patent examiners may launch an interview ex officio under the pilot program, or the appropriate patent applicants may request the same. In principle, the interview may be requested by a patent applicant for his/her ten (10) invention patent applications every time.
2. Individuals well aware of the claimed invention in the concerned application must attend the interview in person or by video.
3. The interview will be recorded with necessary information unless patent applicants claims that the interview record will involve their trade secrets.
4. In principle, a notification of the examination result will be sent to the patent applicants within six (6) months after the interview is finished.

Takeaway

The new pilot program is a win-win measurement, which can improve the examination efficiency and quality and facilitate the patent applicants to obtain the examination result sooner.

References

Hyperlink: Announcement from TIPO (in Chinese)

Dr. Cross Liu

Executive Manager of RichIP Group

III. Priority Document Exchange (PDX) for Design Patent Applications

1.PDX between Taiwan and Japan

Taiwan Intellectual Property Office (TIPO) and Japan Patent Office (JPO) have built a PDX measurement applicable for Invention Patent Applications and Utility-Model Patent Applications between Taiwan and Japan since December 2, 2013.

On October 30, 2019 TIPO and JPO signed a Memorandum of understanding (MOU) on the PDX to further include Design Patent Applications into the PDX measurement.

Sticking to the plan, the PDX for Design Patent Applications between Taiwan and Japan will come into force since January 1, 2022.

2.PDX between Taiwan and Korea

TIPO and Korea Intellectual Property Office (KIPO) have also built a PDX measurement applicable for Invention Patent Applications and Utility-Model Patent Applications between Taiwan and Korea since January 1, 2016.

On November 12, 2021 TIPO and KIPO signed a MOU on the PDX to further include Design Patent Applications into the PDX measurement.

According to the schedule made by TIPO and KIPO, the PDX for Design Patent Applications between Taiwan and Korea will come into force in July, 2023.

Takeaway

The PDX is a fees-free measurement, and can save time and cost of delivery of paper documents.  Thus, applicable patent applicants may make good use of the measurement.

References

Hyperlink: TIPO’s Announcement-Changes to PDX between TW and JP

Hyperlink: TIPO’s Announcement-MOU on PDX for Design Patent Applications

Dr. Cross Liu

Executive Manager of RichIP Group

IV. US Trademark Modernization Act Will Be Implemented

Trademark Modernization Act (TMA) which was codified on December 27, 2020 will be implemented on December 18, 2021.  The Act includes the following highlights:

1.New procedures

1.1   Ex parte expungement proceeding

Any party may request cancellation of some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services.  This proceeding must be requested between three and ten years after the registration date. Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.

1.2   Ex parte Reexamination proceeding

Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date.  When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.  When the underlying application was filed with an intent-to-use basis, the relevant date is the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.  This new procedure must be requested within the first five years after registration.

2.Changes to existing procedures

2.1 The existing grounds for cancellation of nonuse and abandonment are unaffected by this new expungement ground for cancellation.

2.2 Applicants or registrants must respond within three months to either office actions issued during examination of an application or post registration office actions, but they still can request a single three-month extension of time to respond.

2.3 The TMA provides statutory authority for USPTO to deal with letters of protest that submitted by third parties prior to registration.

Takeawa

Nonuse of trademark will fail to exhibit the value of a trademark and thus induce the risk of cancellation.  Accordingly, trademark owners or their assignees should use their registered trademark in commerce actively.

References

Hyperlink: USPTO’s Announcement

Dr. Cross Liu

Executive Manager of RichIP Gro

I. [TW] Spatial Design (Architectural And Interior) Is Clearly Specified As Eligible Subject Matter In Taiwan

II.[TW] Changes to Accelerated Examination Program

III.[CN] Paper Certificates of Chinese Trademark Are No Longer Available  

IV.[UK] Consultation for Patent System Involving AI

I. Spatial Design (Architectural And Interior) Is Clearly Specified As Eligible Subject Matter In Taiwan

The Substantive Examination Guidelines for Design Patents of Taiwan has been amended in 2020, in which the Taiwan Intellectual Property Office (TIPO) has added instructions and examples for “Spatial Design” descriptions and drawings (including architectural and interior designs).

According to the Chapter 3, Paragraph 2, Section 1.2 of Patent Examination Guidelines：The TIPO has clearly indicated that a corporeal object having a solid shape of three dimensions, including an architecture, a bridge or an interior design, could be a subject matter of design patents.

The drawings of spatial design for filing should contain the perspective view because the architectural design, interior design and like are the creations having the stereo perception (three-dimensional effect).

Following are the examples showing in different presentation types.  Example 1 adopts the external perspective as usual design patents.  Example 2 further adopts the internal perspective view to emphasize configuration of internal space.  In addition, the explanatory figures indicate how to present the inner views.

Example 1: Portion of Kitchen

Example 2: Portions of Room

Explanatory figures

Our Proposals

Referring to the market development and success of many brands, we can understand that the interior decoration, architectural appearances and the arrangement of the physical stores are all important factors that establish the brand image.  However, there are still very few spatial design patents in Taiwan, and the designers mostly rely on protection of copyright.

The advantage of copyright is that the creator obtains the copyright the minute the work is completed, and no formal application is required.  However, when a dispute happens, the copyright owner shall bear the burden of proof of the existence of his/her rights, that is, he/she needs to prove his/her identity as the copyright owner, whether the accused infringer has the possibility of “reasonable contact” and/or other matters (for example, please refer to the Civil Judgment No. 2725 of Taishang Zi No. 109– Disputes on hotel housing furnishings), it is not an easy task.

For design patents, the documents that meet the formal requirements must be submitted at the time of application.  When the patent right is granted, a clearer scope of protection and effective date of the right can be obtained.  That is, there is a more solid basis for judgment in the infringement, and the evaluation whether an infringement can be concluded is relatively less uncertainty.

According to the above, we propose the designer applying for a design patent application when the drawings is completed, preferably before any publishment so as to avoid the risk of disclosing the design to unspecified third parties (such as printers and construction companies) and thus cause a bar to the novelty or being infringed by any third party.

References

Hyperlinks: Instructions for specification and drawings of design patents

Hyperlink: Chapter 3 of Patent Examination Guidelines

Hyperlink: Taiwan Design Patent No. D198655

Hyperlink: The Supreme Court’s Civil Judgment No. 2725

Chun-Wei Lo

Patent Counselor of RichIP Group

II. Changes to Accelerated Examination Program

According to the current Accelerated Examination Program (“AEP” for short) implemented by Taiwan Intellectual Property Office (TIPO), Applicant can request an accelerated examination as long as his/her Taiwan invention application meets one of the following conditions:

Condition 1:  The corresponding application has been approved by a foreign patent authority under substantive examination.

Condition 2: One of the EPO, JPO or USPTO has issued an Office Action during substantive examination but has yet allowed the foreign counterpart of the invention application.

Condition 3: The invention application is essential to commercial exploitation.

Condition 4: Inventions related to green energy technologies.

TIPO has amended the AEP recently, and the amended AEP will come into force on January 1, 2022.  The amendments include:

• replacing “green energy technologies” with “green technologies” in Condition 4; and
• changing the original notification deadline of examination results to “6 months” from “9 months” for Conditions 3 and 4.

The amendments to the AEP are good news to Applicant who has an invention application on and after January 1, 2022, because the bar of Condition 4 will become lower and the examination result under Condition 3 or Condition 4 can be obtained sooner.

References

Hyperlink: Announcement from TIPO

Dr. Cross Liu

Executive Manager of RichIP Group

III. Paper Certificates of Chinese Trademark Are No Longer Available

China National Intellectual Property Administration (CNIPA) has recently announced the following adjustments regarding paper certifications of trademark registration:

1. Paper certificates of trademark registration will NOT be issued after January 1, 2022; and

2. Within the transition period (from October 15, 2021 to December 31, 2021), CNIPA still issues paper certificates of trademark registration to applicants who have accessed the electronic certificates of trademark registration from the website (http://sbj.cnipa.gov.cn/) of the Trademark Office of CNIPA, under the situation that the applicants’ trademark applications were originally filed in writing.

References

Hyperlink: Announcement of CNIPA

Dr. Cross Liu

Executive Manager of RichIP Group

IV. Consultation for Patent System Involving AI

The UK government has recently launched a consultation on how the copyright system and the patent system should deal with Artificial Intelligence (AI).  Regarding the patent system, this consultation is seeking evidence and views on the extent to which patents should protect inventions made by AI.  The consultation is led by the UK Intellectual Property Office (UKIPO), and will last for 10 weeks, ending on January 7, 2022.

The consultation can be regarded as a follow-up of the call for views previously published by the UKIPO.  As a recall, the questions on patents asked by the participants in the call for views process cover four themes, and the UK government has made responses for the four themes respectively, as listed below:

1. The aims of the patent system

The UK government acknowledged that most participants support an effective and balanced patent system which can incentivize development of AI, but also notice that Intellectual Property (IP) may limit development of new technology.  The UK government also got information from the participants about how different types of protection can be provided for different AI innovations, and would consider the IP landscape as a whole when considering next steps.

2. AI as an inventor

The UK government agreed with several participants on that the current inventorship criteria may remain unchanged.  The UK government, however, noticed that many participants have argued that the current inventorship criteria potentially have a detrimental impact on innovations, including transparency in the innovation process.

The UK government wanted to ensure transparency in the innovation process and that the inventorship criteria will not be a barrier to protect the development of AI.  To achieve these aims, the UK government planned to consult later on a range of possible policy options, including legislative change, for protecting AI generated inventions which would otherwise not meet the current inventorship criteria.

3. The conditions for granting a patent

The UK government acknowledged that although the conditions for the grant of AI patents in the UK look to be generally fit for purpose from the views received, there were mixed comments about patent exclusions.  The UK government agreed that the UK patent system should ensure the right balance between the protection and disclosure of inventions and freedoms to innovate.  The UK government agreed that AI inventors need UK patent exclusion practice to offer more clarity.  The UK government also appreciated concerns that a lack of international harmonization in patent exclusion practice across patent offices places burdens on patent applicants.  Therefore, the UK government was going to perform various improvements.

4. Patent infringement

The UK government agreed with most participants on that the current practice of “legal persons” is liable for infringement.  In addition, The UK government acknowledged that in respect of “AI patents,” the courts have appropriate flexibility to make decisions based on the facts of the case, and claimants are able to use court processes to support their actions.  Thus, The UK government did not intend to intervene in this area.

Takeaway

AI can overcome many problems surrounding human life, but also make impact on IP right worldwide.  To seek a maximum balance between flourishing development of AI and robust protection of IP right, many counties, including the UK, have done some surveys and researches on the pros and cons in respect of IP right involving AI, and will appropriately adjust the current regulations of IP right in the future.  Despite that the regulations of IP right are different in different countries/regions, there appears a consensus that the protection of IP right needs to cover AI’s contributions.

References

Hyperlink: Announcement of UKIPO-Consultation on copyright and patents legislation

Hyperlink: Announcement of UKIPO-Government response to call for views on artificial intelligence and intellectual property

Dr. Cross Liu

Executive Manager of RichIP Group

News Topics

I. [TW]  Can AI System Be Inventor?

II.[TW]  Trademark of Squid Game

III.[CN] Effects on Design Patent Practice after Fourth Amendments to China Patent Law

IV.[US] Extension of ACFP 2.0

I. Can AI System Be Inventor ?

Can an AI system be an inventor in Taiwan? The Intellectual Property and Commercial Court of Taiwan has answered the question, in the negative, in two recent judgements involving Dr. Thaler vs. Taiwan Intellectual Property Office.

Plaintiff’s Claims

1. The AI system named DABUS made a substantial effort to develop an invention claimed in the patent application at issue so that the contribution qualifies the AI system as an Inventor.
2. Taiwanese intellectual property laws do not specify that an inventor must be a natural person. A legal entity can be an author under the Taiwanese Copyright Act so that it is unreasonable why an AI system cannot be regarded as an inventor.

Court’s Opinions

1. An eligible inventor means one who has personality rights in legal in addition to making a substantial effort for an invention, and thus the inventor must be a natural person.
2. In view of the Patent Act, the Enforcement Rules of the Patent Act, and the Patent Examination Guidelines, an eligible inventor should be a natural person. Also, since the subject matter of the Copyright Act is different from that of the Patent Act in natural, the provisions of the Copyright Act do not necessarily apply to an entity who is involved in a patent event under the Patent Act.  Not to mention, an AI system is not an eligible person in legal because it is neither a natural person nor a legal entity.

Takeaway

Under the Taiwanese present practice, it is recommended that the designer of an AI system plays the role of the inventor in lieu of the AI system in a patent application to avoid a necessary rejection.

References

Hyperlink: Judgement for Administrative Suit under Patent Case, No. 3, 2021

Hyperlink: Judgement for Administrative Suit under Patent Case, No. 4, 2021

Dr. Cross Liu

Executive Manager of RichIP Group

II. Trademark of Squid Game

The Korean TV series“SQUID GAME” is one of currently popular TV series, which has been provided by the famous streaming service named “Netflix” worldwide.  With the fade, Netflix has also been seeking trademark protection. Up to November 3, 2021, Netflix has filed four trademark applications with Taiwan Intellectual Property Office (TIPO) as listed below:

A trademark registration is always pursued with a popular event, but the popular event also brings a problem of trademark squatting.  If a trademark is registered too early, it may be ceased because of “no trade.”  In contrast, if a trademark is registered too late, it may be squatted by other people.  Therefore, the occasion of filing a trademark application is, no doubt, important.  If you or your clients need such a service or assistances in Taiwan, China or Hong Kong, please feel free to contract RichIP group.

References

Hyperlink: Trademark Database of TIPO-Application No. 110074464

Hyperlink: Trademark Database of TIPO-Application No. 110075224

Hyperlink: Trademark Database of TIPO-Application No. 110075225

Hyperlink: Trademark Database of TIPO-Application No. 110078295

Dr. Cross Liu

Executive Manager of RichIP Group

III. Effects on Design Patent Practice after Fourth Amendments to China Patent Law

The China National Intellectual Property Administration (CNIPA) has implemented the new Patent Law since June 1, 2021, in which:

1. Partial designs are permissible (originally only the Whole Design of articles is acceptable).

Applicants may seek patent protection for a specific part of a design, i.e., submitting drawings of the whole product in which the part sought to be patented should be shown in solid lines (scope to be claimed) in combination with dashed lines (scope not to be claimed) to seek a more generic scope of protection.  However, shading lines and hatching are still impermissible.

2. Patent term extension for Chinese design patents.

The duration of protection of design patents is extended to 15 years from the filing date (originally the patent term for design patents is 10 years only).

3. Domestic priority for similar designs (originally only foreign priority is permissible).

Any applicant who filed a first application for a design is entitled to file a subsequent application, within six months from the filing date of the first application, for a same or similar design of the same article/subject matter and claims the domestic priority.

Our Proposals

According to the new regulations, if a new design is characterized in a specific part as compared with existing designs, the applicant may consider filing an application for a partial design.  In addition, if there is any modification(s) to the design after the first application is filed, the applicant may file a subsequent application, within six months from the filing date of the first application, for the design of the same article/subject matter and claims the domestic priority so as to enjoy the benefit of patent priority.

References

Hyperlink: Chinese Patent Act (ver. 2020)

Chunwei Lo

Patent Counselor of RichIP Group

IV. Extension of ACFP 2.0

The After Final Consideration Pilot 2.0 (“AFCP 2.0” for short) is an ongoing measure aiming to increase prosecution efficiency, which allows Applicant to file an amendment and/or an argument under some restrictions with the USPTO after receiving a Final Office Action, and authorizes additional time (up to three (3) hours for plant and utility applications, and up to one (1) hour plus any time attributed to an interview for design applications) for Examiner to search, consider Applicant’s response, and/or interview with Applicant after the Final Office Action.

Under proper situations, the AFCP 2.0 can prevent Applicant from the expensive fees for filing a request for continued examiner (RCE), and increase prosecution efficiency as well.  Thus, applying for an AFCP 2.0 has become a benefit strategy for Applicant to overcome the rejection after final.

In view of the announcement from the USPTO, the AFCP 2.0 has been extended through September 30, 2022.

References

Hyperlink: Announcement from USPTO

Dr. Cross Liu

Executive Manager of RichIP Group