Rich IP & Co. (under RichIP Group) was again surveyed by ASIA IP as one of the dominant IP firms in Taiwan in 2022.

Overview of Rich IP & Co.:

Overview of IP Expert Russell Horng:

Overview of IP Expert Chien-Chung Yuan:

Latest Article, “Improving Taiwan’s patent search application environment and local patent portfolios”

Rankings of Rich IP & Co. in 2022 are listed below:

I. [BR] Brazil’s Strategies for Increasing Patent Applications

II.[JP] Reinforcement of Rules for Counterfeit Goods Imported Overseas

III.[TW] Enacted Article 60-1 of Patent Act Has Been Implemented

IV.[KR] Accelerated Examination of Patent Applications in Connection with Vaccines and Medications of COVID-19

I. Brazil’s Strategies for Increasing Patent Applications

The Brazilian Patent and Trademark Office (BPTO) plans to increase the number of patent applications by more than 10% in 2022.

The main directions are to promote the plan of improving the patent examination process and patent decision automation, to outsource patent search, and to proactively handle the backlog cases, with the aim of facilitating the efficiency of examination and increasing the number of patent cases with relevant procedures completed.

In terms of examination schedule, the followings strategies are expected to be implemented:

1. The examination period of design applications will be shortened to within four months;
2. The examination period of trademark application will be shortened to within nine months, and in case of objection, the examination will be completed within 18 months; and
3. The examination of invention/utility patent applications will be finished within 3.8 years.

In addition, the procedure with respect to design patent applications will comply with the Hague Agreement Concerning the International Deposit of Industrial Designs, in order to provide a more convenient portfolio way for the domestic and foreign patent applicants.

References

Hyperlink: The Brazilian Patent and Trademark Office (BPTO)

Howard-Pong

Patent Counselor of RichIP Group

II. Reinforcement of Rules for Counterfeit Goods Imported Overseas

JPO announced on July 19, 2022 that the Amendments to Trademark and Design Patent proposed in May 2021 will be implemented from October 1, 2022.

The crux of the Amendments is that the counterfeit goods which the foreign enterprises intend to import via post will be constrained by Customs as the “goods prohibited from import.”  Besides, even if someone shops at foreign or domestic online shop in person, the counterfeit goods sent to Japan from other countries, which infringed Trademark rights or Design Patent rights, will also be confiscated by Customs.

References

Hyperlink：Japan Patent Office

Dr. Cross Liu

Executive Manager of RichIP Group

III. Enacted Article 60-1 of Patent Act Has Been Implemented

TIPO announced on June 29, 2022 that enacted Article 60-1 of Patent Act will be implemented from July 1, 2022.  The article is enacted to support “Patent Linkage of Drugs” of Pharmaceutical Affairs Act, which is a measurement for resolve the infringement problem between generic drugs and new drugs at the stage of application for permission of generic drugs.

The highlights of Article 60-1 of Patent Act include:

The patentee can demand removal of infringement or prevention of any threat of infringement according to Paragraph 1 of Article 96 of Patent Act upon receipt of a notification that the applicant for a drug permit license claims that the patent right uploaded by the owner of the new drug permit license should be revoked or no infringement of the patent right.

To avoid the risk of being accused of patent infringement for marketing a generic drug, the company of the generic drug can file a request for a declaratory judgment of patent infringement once the patentee of new drugs does not file a lawsuit of patent infringement within the prescribed period.

References

Hyperlink: Taiwan Intellectual Property Office

Dr. Cross Liu

Executive Manager of RichIP Group

IV. Accelerated Examination of Patent Applications in Connection with Vaccines and Medications of COVID-19

To support research, development and production of vaccines and medications of COVID-19, KIPO announced a one-year measurement of accelerated examination of patent applications on June 23, 2022.

The accelerated examination is applicable to patent applications in connection with vaccines and medications which are supported by national researchs, and patent applications filed by companies which produce vaccines and medications or apply for clinical trial in Korea.

In accordance with the measurement, accelerated examination of a qualified patent application can be undertaken within two or three months on average.  As compared with general patent applications, the accelerated examination can reduce about ten months of idle time for the qualified patent applications.

References

Hyperlink: Korean Intellectual Property Office

Dr. Cross Liu

Executive Manager of RichIP Group

I. [JP] Patent Office Suspends Patent Prosecution Highway with Eurasian Patent Office and Russian Federal Service for Intellectual Property

II.[PH] The Intellectual Property Office of the Philippines (IPOPHL) launches new Juana Patent and Juana Design Programs to empower MSMEs, women inventors, and designers

III.[CN] CNIPA Cease Providing Paper Patent Certificates

I. Patent Office Suspends Patent Prosecution Highway with Eurasian Patent Office and Russian Federal Service for Intellectual Property

On May 10, 2022, Japan Patent Office (JPO) announced that it would suspend the Patent Prosecution Highway (PPH) program with Eurasian Patent Office (EAPO) and Russian Federal Service for Intellectual Property (ROSPATENT).  More specifically, all patent applications field, after May 10, 2022, with EAPO and ROSPATENT will no longer be the case of Office of First Filing (OFF), and any patent applications filed, before May 10, 2022, with EAPO and ROSPATENT will also be disqualified from being the case of OFF.  Consequently, after the announcement, patent applicants will be unable to submit beneficial examination results made by EAPO or ROSPATENT (i.e., “OFF”) to JPO (i.e., Office of Second Filing, “OSF”) to accelerate the examination of patent applications pending on JPO.

References

The Japan Patent Office (JPO): EAPO

The Japan Patent Office (JPO): ROSPATENT

Jason hung

Patent Counselor of RichIP Group

II. The Intellectual Property Office of the Philippines (IPOPHL) launches new Juana Patent and Juana Design Programs to empower MSMEs, women inventors, and designers

For celebrating Philippines Women’s Month in March, the Intellectual Property Office of the Philippines (IPOPHL) has launched the Juana Patent and Juana Design Protection Incentive Programs (JPIP) to boost the participation of women inventors and designers, thereby promoting industrial innovations and developments.

The JPIP waive certain fees for up to 50 patent grant, 150 utility model (UM) and 150 industrial design (ID) applications that are qualified and filed for qualified female inventors and innovative, women-led MSMES and startups.  In addition, patent applications processed through the JPIP will also be prioritized and coursed through IPOPHL’s fast lanes to accelerate examination.

References

The Intellectual Property Office of the Philippines (IPOPHL)

Jason hung

Patent Counselor of RichIP Group

III. CNIPA Cease Providing Paper Patent Certificates

Since March 1, 2022, China National Intellectual Property Administration (CNIPA) has ceased providing paper patent certificates and only provided digital patent certificates for electronic applications.  In addition, authenticity of a digital patent certificate can be checked and verified through the official website for electronic patent application.

References

Hyperlink: Announcement of CNIPA

Zhi-Jun Luo

Patent Paralegal of RichIP Group

I. [CN] China will become a member of Hague Agreement

II.[KR] Artificial Intelligence Search Available for Invention and Utility Model Patent Applications in Korea

III.[US] Scholars questioned the genericness of trademarks in the internet era

I. China will become a member of Hague Agreement

According to current practice, when a Chinese applicant wanted to apply for a design patent in other countries, it was necessary to prepare multiple application documents in multiple languages and submit applications to each country separately.  This process takes a lot of time and expense.

The good news is that China has applied to join the Hague Agreement this year, and it will enter into force in China on May 5, 2022.  That way, the motivation of Chinese applicants to seek design patent protection in other countries and of applicants from other countries to seek the protection in China is expected to increase.

An application filed under the Hague Agreement may include up to 100 designs belonging to the same class (first class) of the Locarno Classification (LOC).  However, in the national phase, the specialized authorities of certain Contracting Parties may refuse some requests based on the substantial elements of their domestic law requirements.  On this matter, Applicants can refer to the Guidance from WIPO to reduce the chance of refusals, or be prepared for division or modification.

In addition, since the application procedure under the Hague Agreement will include the cost of delivering documents to the International Bureau and the subsequent designation to enter different countries, if the country in which the applicant expects to designate in the future is, for example, less than four countries, the cost of going through the Hague Agreement may not necessarily less than that of individual applications for each country.  On this matter, Applicants can refer to the Fee Calculator produced by WIPO for further consideration.

It should also be noted that Hong Kong and Macau are special administrative regions with independent intellectual property units.  Therefore, both regions are not being included unless there are otherwise notification.

References

Hyperlink: Guidance for mitigating the risk of refusals

Hyperlink: Hague System Fee Calculator

Chun-Wei Lo

Patent Counselor of RichIP Group

II. Artificial Intelligence Search Available for Invention and Utility Model Patent Applications in Korea

The Korean Intellectual Property Office (KIPO) started to develop an artificial intelligence (AI) search system (hereinafter referred to as “Search System for Technical Patent Applications”) for the examination of invention and utility model patent applications from the end of 2021, and inaugurated the search system on March 25, 2022.

In the “Search System for Technical Patent Applications”, AI can, in lieu of the user, automatically look up the key words or sentences from a patent application document to be examined, and then search relevant prior-art references and further rank the searched prior-art references based on their respective similarity.  Considering search accuracy, KIPO has built a huge database for AI by about five million patent documents, such that AI can do a patent search based on information of these patent documents (e.g., key sentences, Cooperative Patent Classification (CPC) codes, etc.).

Actually, before developing the “Search System for Technical Patent Applications”, KIPO has utilized AI for trademark search or design patent search.  It can be seen that KIPO has applied AI technology to various areas of intellectual property step by step, thereby improving examination efficiency and accelerating digitization of examination.

References

Korean Intellectual Property Office

Jason hung

Patent Counselor of RichIP Group

III. Scholars questioned the genericness of trademarks in the internet era

In 2012, David Elliott and Chris Gillespie (“Elliott”for short) claimed that the text trademark “GOOGLE” should be understood as a generic name for goods or services, and therefore filed a petition for revocation.  One of Elliott’s main arguments was that “the public has used GOOGLE as a verb with a meaning of internet searching, which constitutes generic use”, but ultimately the Ninth Circuit Court of Appeals disagreed with the argument and made a judgment in favor of Google LLC in 2017.

In brief, the Ninth Circuit Court of Appeals expressed that Elliott misunderstood the definition of genericness of a trademark, and stated that genericness of a trademark can only be established if the primary significance of the trademark to the public was the name of a particular good or service  and unrelated to its source.  In this way, the main issue in this case should be “whether the primary significance of the word “GOOGLE” to the public is a generic name for an internet search engine on the Internet, or a mark to identify the Google search engine.” The latter  cannot constitute genericness.  That is to say, generalization is subject to public perceptions, and the judgment quoted J. Thomas McCarthy[1] as saying that “over time, the holder of a valid trademark become a “victims of genericide.”

However, in the internet era, people rely heavily on Internet search engines to search for trademarks.  Based on this premise, scholar Cameron Shackell re-raises the question of “Is genericness still adequately defined?”[2]  He uses the GOOGLE case as an example[3], and states that GOOGLE participates in the search process and enjoys structural and semantic advantages in the minds of consumers, the trademark granted to the search firm is economically equivalent to a generic trademark, and should be sufficient to constitute a new class with the function of “super generic.”

Shackell discusses this issue primarily from an economics perspective and a consumer decision-making perspective.  First, he modifies the model of the economic effects pertaining to trademark law proposed by Landes and Posner’s (1987), and points out that the technology for producing information has become an important factor affecting the price of goods in the internet era, because the firm providing search directly affects the search cost of the consumers’ search for specific items.  Dominant firms are believed to be able to monopolize the attention of consumers, and can also charge advertising fees from other firms with the needs of reducing search cost and spotlighting their marks.  In the past, few firms may enjoy monopolistic returns through a reflexive use of trademark system itself.  However, the systemic impact of this is obscured by providing free searching.

Shackell goes on to point out that this effect is more evident in the sequence of using generic terms and trademarks in consumer decision making.  In the past, consumers usually search for a trademark by generic terms related to the trademark.  In the internet era, consumers need to know the trademark of the firm (e.g. GOOGLE) with service of search before the searching process, that is, the trademark of the firm occurs at search initiation in any search and will appear along with all generic terms.  Moreover, GOOGLE’s influence on consumers is not limited to internet searches, consumers actually use search pages to find many other trademarks, GOOGLE should therefore be considered “super generic.”

To sum up, Shackell believes that trademarks such as GOOGLE are indeed a special case caused by the changes of the times, and should be further explored to avoid outdated regulations leading the rise of monopolists.  However, he also acknowledges that the social costs and hidden externalities of such trademarks are ubiquitous and complex, and that it may take many years to fully perceived and understand.  Therefore, he believes that at this stage, it may only be possible to rely on common law precedent to heal the system and hopes that the court will pay attention to the reflexive of such trademarks and explain the super-generic nature as a multiplier of traditional evidence.

[1] Author of 《McCarthy on Trademarks and Unfair Competition》, Fourth edition, 1998

[2] Cameron Shackell, 2021,《Science, Technology, & Human Values》,DOI:10.1177/01622439211055482

[3] According to a statistic on November, 2020, Google Search website has the most page views

References

Hyperlink: The judgment of Ninth Circuit Court of Appeals

Hyperlink: The full-text article of Shackell

Chun-Wei Lo

Patent Counselor of RichIP Group

I. [TW] Statistics of Taiwan Top 100 Patent Applicants in 2021

II.[CA] Canadian Intellectual Property Office (CIPO) became a Digital Access Service (DAS) depositing office for patent applications

III.[JP] A multiple dependent claim serving as basis for another multiple dependent claim will no longer be allowed in Japan

IV.[CN] Implementation of Trademark Examination and Trial in China

I. Statistics of Taiwan Top 100 Patent Applicants in 2021

Domestic Applicants

As shown in the following table, Taiwan Top 100 domestic patent applicants filed 12,234 applications for patents in 2021, including 9,179 invention patent applications, 2,357 utility-model patent applications , and 698 design patent applications, and the annual increase of patent application reaches about 8%.  Top 3 of the domestic patent applicants are Taiwan Semiconductor Manufacturing Company (1,950 applications), AU Optronics Corporation (471 applications), and ACER INCORPORATED (462 applications) in order.

As shown in the following table, Taiwan Top 100 domestic patent applicants include six (6) banks, twenty-eight (28) schools, and five (5) research institute.  Top 3 of the banks are Mega International Commercial Bank (165 applications), China Trust Commercial Bank (155 applications), and Taiwan Cooperative Bank (144 applications) in order.  Top 3 of the schools are Taipei City University of Science and Technology (170 applications), National Yang Ming Chiao Tung University (141 applications), and National Cheng Kung University (113 applications) in order.  Top 3 of the research institutes are Industrial Technology Research Institute (404 applications), Metal Industries Research & Development Centre (89 applications), and Institute of Nuclear Energy Research, AEC (47 applications) in order.

Foreign Applicants

As shown in the following table, Taiwan Top 100 foreign patent applicants filed 14,149 applications for patents 2021, including 12,335 invention patent applications, 148 utility-model patent applications , and 1,666 design patent applications, and the annual increase of patent application reaches about 5%.  Top 3 of the foreign patent applicants are Qualcomm (845 applications), APPLIED MATERIALS (793 applications), and NITTO DENKO CORPORATION (529 applications) in order.

References

Hyperlink: TIPO’s Press Release (in Chinese)

Dr. Cross Liu

Executive Manager of RichIP Group

II. Canadian Intellectual Property Office (CIPO) became a Digital Access Service (DAS) depositing office for patent applications

The Canadian Intellectual Property Office (hereinafter referred to as CIPO) announced that it would become a depositing office for patent applications using the World Intellectual Property Organization (WIPO) Digital Access Service (DAS), effective February 1, 2022.

When an applicant files patent applications for the same invention in different countries, the later application(s) may enjoy the benefit of priority based on the first application.  Since the priority claim involves the patent offices of at least two countries, it is important to exchange priority documents easily and securely between these patent offices.  In practice, the patent offices of various countries may adopt two exchange channels: DAS and Priority Document Exchange (PDX).

DAS was created and managed by the International Bureau (IB) of WIPO to provide services for exchanging priority documents between patent offices of various countries (area).  DAS is operated by two offices: the depositing office and the accessing office.  The depositing office is usually the patent office that receives the first-filed application, also known as the Office of First Filing (OFF).  Applicants may request the depositing office to provide priority documents through DAS.  The accessing office is usually the patent office that receives the later-filed application and may obtain the priority document through DAS without directly submitting a copy of the priority document (certified copy).

CIPO has been an accessing office for patent applications since October 30, 2019, and it has also been a depositing office since February 1, 2022.  The applicant may request that their priority documents be uploaded to DAS at the time of filing the first application with CIPO.  If applicants need to make a DAS request after filing, they can request to upload documents to DAS by using CIPO’s new document request form.  Accordingly, other patent offices (i.e., the accessing office) of the later-filed application can search through DAS to obtain the priority document.

The applicants may save time and efforts to claim priority easily for their later-filed applications in other countries based on the first-filed application with CIPO through the service of DAS.

References

Hyperlink：Taiwan Intellectual Property Office

Hyperlink：Canadian Intellectual Property Office

Jason hung

Patent Counselor of RichIP Group

III. A multiple dependent claim serving as basis for another multiple dependent claim will no longer be allowed in Japan

In order to reduce the patent examination burden of Japan Patent Office (JPO) and harmonize Japanese patent examination practices with other countries’, JPO announced revisions to Enforcement Rules of Invention Patent Act and Enforcement Rules of Utility Model Patent Act on February 25, 2022, and the revisions will come into force on April 1, 2022.

Specifically, in accordance with the order of Ministry of Economy, Trade and Industry (METI), Enforcement Rules of Invention Patent Act was amended by adding the Fifth Subparagraph stipulating “a multiple dependent claim shall not serve as a basis for any other multiple dependent claim” into Article 24-3 on the basis of Patent Act, Article 36, Paragraph 6, Subparagraph 4, while Article 4 of Enforcement Rules of Utility Model Patent Act was amended correspondingly.

The effect of the revisions is not retroactive, which means that the revisions will only apply to patent applications filed on and after April 1, 2022.  Nevertheless, the revisions will not apply to divisional applications filed on and after April 1, 2022 whose parent application is filed before April 1, 2022.

References

Japan Patent Office (JPO)

Jason hung

Patent Counselor of RichIP Group

IV. Implementation of Trademark Examination and Trial in China

China National Intellectual Property Administration（CNIPA） has implemented the “Trademark Examination and Trail Guidelines” and abolished the “Trademark Examination and Trial Standards” since January 1, 2022.  The “Trademark Examination and Trail Guidelines” are divided into two parts, “Formality Examination and routine works” and “Trademark Examination and Trail”.

About the first part

The first part sorts and optimizes the system of the existing processes of the formality examination standards and work procedures, with a total of twenty-five chapters, and is divided into five sections as follows:

• The first section “Formality requirements of Trademark application”

This section Introduces the formality requirements of Trademark application, including Trademark registration, revocation, opposition and review.

• The second section “Classification of goods and services, and the elements of Trademark search”

This section respectively classifies and describes goods and services, trademark text, and trademark image search such that the applicant may fill in the category and name of the goods in accordance with the prescribed goods classification table when applying for and registering a trademark.

• The third section “Examination of other trademark affairs”

The section focuses on explaining the disputes over civil rights disposition in practice during trademark transfer or assignment.

• The fourth section “Examination of Madrid Agreement concerning the International Registration of Trademarks”

The section summarizes the relevant regulations according to China intellectual property rights and “Protocol Relating to the Madrid Agreement concerning the International Registration of Marks”, which comprises the examination contents and specific requirements of the entire scope of the registration examination.

• The fifth section “Processes of trademark application”

This section completely describes the application process to CNIPA, and systematically sorts out regulations regarding processing of document, fees, file management, electronic applications or the likes.

About the second part

The second part acts as the substantive standard of trademark examination and trial, with a total of nineteen chapters, which is composed on the basis of the “Trademark Examination and Trial Standards”. The primary highlights of the second part are organized as the following three items:

1. Effectively regulating the order of trademark application and registration

The second part focuses on combating malicious trademark applications, restricting trademark agencies from improperly squatting trademarks and hoarding trademarks or the likes. Also, the details make specific regulations for reasonable submission of trademark registration applications to build a fair and equitable market.

2. Enrich the relevant content to meet Trademark Act

The second part also enriches and completes necessary examination details regarding, for example, the prohibited matters of trademark logo, , to meet Trademark Act effective as from 2019.

3. Relevant regulations of trademark maintenance

The second part also completes the relevant standards of trademark maintenance, cancellation or the like after application such that trademark practitioners can have a basis for raising opinions, invalidation or revocation, and avoid damaging the rights and interests of trademark owners due to inappropriate reasons.

References

Hyperlink：CNIPA Announcement

Hyperlink：Trademark Examination and Trail Guidelines

Howard-Pong

Patent Counselor of RichIP Group

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

Hyperlink: TIPO News

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 ￥):

1. Patent Annual Fees

2. Trademark fees

3. The related fees of International Patent Applications (Invention patents, Utility model patent)

4. The related fees of International Trademarks

References

Hyperlink：JAPAN PATENT OFFICE

Jason hung

Patent Counselor of RichIP Group

I. [US] Change to Definition of Receipt Date of Electronic Submissions of Patent Correspondence

II.[JP] Japan, China, South Korea joint Intellectual Property Symposium

III.[KR] South Korea expands the scope of protection for design patents

IV.[US] PPH Pilot Program Between the USPTO and INPI of France

I. Change to Definition of Receipt Date of Electronic Submissions of Patent Correspondence

Up to now, 37 C.F.R. (Title 37 – Code of Federal Regulations), Section 1.1 has defined that the receipt date of patent correspondence submitted electronically is the date on which the patent correspondence is received by the USPTO at the correspondence address in Alexandria, Virginia.  This is because the physical servers for receiving electronic submissions are located in Alexandria.

The USPTO is in the process of providing servers in other locations such as Manassas of Virginia, and thus proposes to amend the original definition of the receipt date of electronic submissions of patent correspondence to “the date in the Eastern time zone of the United States (Eastern Time) when the USPTO received the patent correspondence.”  This change can avoid that the receipt date of electronic submissions of patent correspondence depends on the location of physical servers.

More details can be found Here.

Dr. Cross Liu

Executive Manager of RichIP Group

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II. Japan, China, South Korea joint Intellectual Property Symposium

On October 26, 2021, the Intellectual Property Association of Japan (IPAJ), the China Intellectual Property Society (CIPS), and the Korea Institute of Intellectual Property (KIIP) jointly organized “Japan, China, South Korea joint Intellectual Property Symposium” through online conferences.

According to an academic cooperation agreement signed by IPAJ, CIPS, and KIIP in 2012, the Symposium will be held by different host countries every year.  The commissioner of the Japan Patent Office (JPO), Mr. Mori Kiyoshi gave a welcome speech at the opening of the conference.  Afterward, several official experts and scholars from Japan, China and South Korea conducted discussions and exchanges of opinions on intellectual property in three stages.

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.

The First Stage:

Mr. Tomoki Sawai, director of the Japan Office of the World Intellectual Property Organization (WIPO) delivered a speech on the topic of “Environment, Intellectual Property, and WIPO GREEN policy”.

The Second Stage:

Experts and scholars from the three countries gave speeches on the common topic of “ESG (Environment, Social, and Governance) and Intellectual Property Rights”, respectively.  Mr. Kazunari Sugimitsu, the expert from Japan, presented “Japanese ESG Investment and Intellectual Property”, Mr. Wenxuan Chen, the expert from China, presented “Enterprise’s Patent Management and Resolution for International Disputes”, and Mr. Yonghee YOON, the expert from South Korean, presented “ESG-related legal issues and corporate strategy”.  After the presentations, the experts and attendees continued a discussion dealing with the above three topics.

The Third Stage:

Mr. Tomokaz Saito, the expert from Japan, presented “Practices and Issues of AI/Data Contract “, Professor Feng Xiaoqing from China, presented “Intellectual Property Strategy and theory for Chinese enterprises”, and Mr. Woong KIM, the expert from South Korean, presented ” GUI (Graphical User Interface) design patents based on the Korean Design Patent Law”.  After the presentations, the experts and attendees continued a discussion dealing with the above topics.

There were 283 guests attended the Symposium including patent attorneys, lawyers, business men and practitioners in the field of Intellectual Property and the seminar ended with great success.

Takeaway

Japan, China, and South Korea are all major economies in Asia and also the Asian countries receiving the most patent applications each year.  Through researches and publications by experts and scholars, Japan, China and South Korea may exchange opinions and intelligence and extend positive influence over Asian countries.

WIPO GREEN was proposed by WIPO for the purpose to provide solutions for accelerating deploying and planning Green Technology between developing countries and developed countries.  While global social issues are becoming more and more obvious, ESG investing has become an important trend in the global investment markets.  At present, investors in many industries have integrated ESG sustainable investing into the company’s business strategy.  When the companies aim for long-term development, whether ESG can be included in the main project is one of the main reasons for investors and the public to evaluate the company’s risks.

With the epidemic of COVID-19, various industries in the world in “post-pandemic era” would face huge impacts due to various bans imposed by countries around the world.  The pandemic not only caused a serious setback in the tourism industry but also affected many other industries.  Hence, the economy of most countries declined due to the pandemic last year, and the global carbon emissions and energy demand decreased.  However, the pandemic has slowed down with the increase in vaccine coverage, and the issues related to alternative energy technology and the related legal issues will once again be paid attention to by various countries.

As a result, it is necessary to go beyond the national framework to solve various global problems such as environmental problems, through the sharing of information by experts and scholars from different countries, and discussion together over various issues raised by industry,official and university.  This “Japan, China, South Korea joint Intellectual Property Symposium” is of great significance to Asian countries,and it is expected that more influential countries in Asia will participate the same activities in the future.

References

Hyperlink: Japan, China, South Korea joint Intellectual Property Symposium (in Japanese)

Hyperlink: WIPO GREEN (in Japanese)

Jason hung

Patent Counselor of RichIP Group

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III. South Korea expands the scope of protection for design patents

The Korean Intellectual Patent Office （KIPO）amended the Korean Design Protection Act to protect the image design such as holograms image, augmented reality image, and virtual reality image, the Act was implemented from October 21, 2021.

In the past, the images for registration must be implemented via an article.  In the amended Design Examination Guidelines (see Chapter 1, Part VI, Paragraph II), the images used to operate equipment or display functions of device can be registered.  That is, the images could be expressed on the wall, road, human body or in the space.  For example, the images for manipulating which is projected from the smart bracelet to the wrist (see Fig. 1), the virtual keyboard projected in the space (see Fig. 2), and the images projected on the road for driver to read driving information (see Fig. 3).

Those images merely for viewing, which are not provided for operating or do not display functions of device, such as TV images, landscape photos, cannot be recognized as image design.  Besides, the design expressed on the screen should be regarded as a partial design of the product and cannot be recognized as “image design” under the law.

Our Proposals

With the rapid developments of technology, KIPO expects that the scope of design patent protection can be extended to images used in the fields of communication, medical treatment, crime prevention, and health care. Applicant who wants to develop designs in the mentioned fields may actively consider applying the design patents as soon as possible to win a place in the arts.

References

Hyperlinks: Korean Design Examination Guildlines

Chun-Wei Lo

Patent Counselor of RichIP Group

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IV. PPH Pilot Program Between the USPTO and INPI of France

The Patent Prosecution Highway (PPH) is a program to promote examining efficiency of patent applications.

The applicant may request a later office to accelerate examination of the claim(s) of his/her patent application(s) if he/she has received a positive opinion for the corresponding application from an earlier office.  In the procedure, the examiner in the later office is allowed to use the search report and examination results made by the earlier office, thereby reducing workload and duplicated efforts.  Accordingly, the application may receive a decision from the later office more quickly.

The PPH pilot program between USPTO and the INPI (National Institute of Industrial Property) of France has commenced on December 1, 2021, and will run for three years, ending on November 30, 2024.

The applicant may submit a PPH request to USPTO based on a patent application that was filed with the INPI on or after May 22, 2020.

References

Hyperlink: USPTO NEWS

Chun-Wei Lo

Patent Counselor of RichIP Group