I. [KR]　“Electronic Exchange of Design Patent Priority Documents between Taiwan and South Korea” is available

II.[CN]　Regarding the design application practice with “Interim Measures for Examination related to the Implementation of the Patent Law” in China

I. “Electronic Exchange of Design Patent Priority Documents between Taiwan and South Korea” is available

The Taiwan Intellectual Property Office (TIPO) and the Korean Intellectual Property Office (KIPO) signed a memorandum of cooperation in 2021, including design patents in the scope of electronic exchange, and will officially provide “Design Patent Priority Document Exchange” service on July 1, 2023, which may simplify the application procedures for a design patent application filed cross-country and also helps to speed up the examination process.

References

Hyperlink: Announcement from TIPO

Hyperlink: Key Points of Design Patent Priority Document Exchange

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

II. Regarding the design application practice with “Interim Measures for Examination related to the Implementation of the Patent Law” in China

The China National Intellectual State Intellectual Property Administration (CNIPA) introduced the partial design system on June 1, 2021.  Nevertheless, the “Enforcement Rules” and the “Guidelines for Patent Examination” corresponding to the amended Patent Law have not yet been announced.

At present, we can only find the approximate direction of changes from the “Draft of Guidelines for Patent Examination to be amended (Ask for Comments)” released in August 2021, “Draft of Guidelines for Patent Examination to be amended (Ask for Comments Again)” released in October 2022, and “Interim Measures for Examination related to the Implementation of the Amended Patent Law” effected on January 11, 2023, and provide the following extract for references.

1. Precautions for filing a partial design patent application

I. Protection object of the partial design

Partial design is used to protect the partial shape, pattern or the combination thereof and the combination of the color, shape and pattern. The claim partial portion is preferably to be a part that can be separated from the product and named independently, such as “air vent of the camera”, ” tread of the tire” and so on.

II. Drawings or photographs for the partial design

Similar to the practical regulations of countries such as the United States, Japan and Taiwan, the applicant can use the solid lines and broken lines respectively or use a single-color translucent block to cover the parts that do not need protection to indicate the claimed design. When necessary, a dot-dash line may be used to indicate the boundary between the claimed part and disclaimed part in the partial design.

III. As for the specification

i. The title of the design

Corresponding to the object of protection, the title of the design should indicate the title of the claimed partial design or the title of the claimed whole design, for example, “the door of the car”, “the camera of the mobile phone”, “the panel of the oxygen generator”. For parts that are difficult to name independently, the applicant could apply the title of the whole design with the position term, such as “the body of the barbecue skewer”, or ” the front of the car”.

ii. The usage of the partial design

The usage of the claimed partial design should be stated and correspond to the usage reflected in the title of the design. Preferably, it is recommended to specify both usages of the whole and the partial design, for example, applying the format “the usage of the whole design is…, and the usage of the claimed partial design is…”, and due to the limitation of the filing system, both descriptions should be limited together into one sentence.

iii. Other descriptions

Preferably, further explain the expression of the subject application, such as the solid lines are applied to depict the claim portion and the broken lines are applied to depict the disclaimed portion; the portion covered by a translucent layer of a certain color is disclaimed portion; the dot-dash lines are applied to indicates the boundaries of the claimed and disclaimed portions, and the dot-dash lines form no part of the claimed design.

2. Precautions for modification of the whole design and the partial design and the combination application

I. Regarding the modification of the whole design and the partial design

At present, the examiner can only accept voluntary amendments within 2 months after filing the application. Beyond this period, even during the stage of response to the office action, the following amendments are  inadmissible:

(1) Amending the whole design to a partial design;

(2) Amending the partial design to the whole design;

(3) Amending one partial design to another partial design in the same product.

The same applies to divisional applications, if the parent application is the whole design, filing a divisional application for a portion thereof is inadmissible; if the parent application is the partial design, filing a divisional application for the whole thereof is inadmissible.

II. Filing a plurality of partial design without a connection relationship

Two or more unconnected partial designs of the same product may be filed as one design if they are related in function or design and form a specific visual effect. For example, ” the two temples of the glasses”, and ” the four corners of the mobile phone”.

III. Regarding the combination application

Two or more similar designs for “the same product” (not the same category of products) can be filed as a combination application, the similar design means that the difference between multiple embodiments is only minor changes, the conventional design in the field, repeated design elements, and/or a variety of color.

It should be noted that the whole design and the partial design of the same product cannot be filed as a combination application.

Our group will keep following the update from CNIPA, and provide the information immediately to our esteemed customers.

References

Hyperlink: “Draft of Guidelines for Patent Examination to be amended (Ask for Comments)” released in August 2021

Hyperlink: “Draft of Guidelines for Patent Examination to be amended (Ask for Comments Again)” released in October 2022

Hyperlink: “Interim Measures for Examination related to the Implementation of the Amended Patent Law” effected on January 11, 2023

Chun-Wei Lo

Trademark and Patent 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 2023.

Overview of Rich IP & Co.:

Overview of IP Expert Russell Horng:

Overview of IP Expert Chien-Chung Yuan:

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

Rankings of Rich IP & Co. in 2023 are listed below:

I. [TW] 　The Taiwan Intellectual Property Office announced the overview of patent and trademark applications accepted in 2022

II. [TW]　Amendments to Article 17, 28 of Enforcement Rules of Patent Act Have Been Effective from May 1, 2023

III. [TW]　Forecast correction: Article 4 and Article 10 of the Approval Measures for the Extension of the Patent Term

I. The Taiwan Intellectual Property Office announced the overview of patent and trademark applications accepted in 2022

In 2022, the Taiwan Intellectual Property Office (TIPO) accepted 72,059 patent applications, a slight decrease of 0.8%.  Among them, invention applications (50,242 cases) increased by 2%; utility model applications (14,662 cases) and design applications (7,155) both decreased by 7%.

There were 19,400 natives’ invention applications, a slight decrease of 0.8%; 13,669 new utility model applications, an annual decrease of 6%, and 3,411 design applications, a decrease of 3%, but the decline rates were all converged compared with those of 2021.

The number of foreigners’ invention applications was 30,842, an increase of 4%; the number of utility model and design patent applications was 993 and 3,744, respectively, a decrease of 21% and 10%.

In terms of trademarks, there were 122,320 categories trademark registration applications (94,778 cases) in our country, of which 74,326 cases were filed for natives, an increase of 1%; 20,452 cases were filed for foreigners, a decrease of 9%.

Among the main categories of trademark registration applications filed for natives, the 35th category (advertising, business operation, etc.) has the greatest number of applications (15,220 cases); besides, due to the epidemic, categories 41 (education, entertainment), such as on-line shopping, remote technology and video games, and category 9 (Computers and technology products, etc.) grew by 7.5% and 2.0%, respectively.  For trademark application filed for foreigners, category 9 (computer and technological products, etc.) has the greatest number of applications (4,493 cases).

References

Hyperlink：Taiwan intellectual property office

Lisa Lee

Patent Paralegal of RichIP Group

II. Amendments to Article 17, 28 of Enforcement Rules of Patent Act Have Been Effective from May 1, 2023

Amendments to Article 17, 28 of the Enforcement Rules of the Patent Act have become effective from May 1, 2023.  A summary of the key points is presented as follows:

1. If a biological material has been deposited in a depository designated by a foreign country in its territory with which Taiwan recognizes the effects of deposits based on reciprocity, documents issued by the depository must include a viability statement (Article 17, Paragraph 6 of the amended Enforcement Rules).
2. Applicants are required to attach a marked document indicating differences/changes in the divisional application if the specification of the divisional application is not the same as that of the parent application (Article 28, Paragraph 3 of the amended Enforcement Rules).

References

Hyperlink：Regulatory Notice of the Intellectual Property Office, Ministry of Economic Affairs

Hyperlink：amendment on the Enforcement Rules of the Patent Act explaination and clause comparison table

Haw-Wei Pong

Patent Counselor of RichIP Group

III. Forecast correction: Article 4 and Article 10 of the Approval Measures for the Extension of the Patent Term

In order to simplify the administrative procedures for examining the extension of the patent term, the draft amendment to the approval method for the extension of the patent term was announced on February 7, 2023.When an applicant applies for an extension of the patent term, if the applicant submit the audit data of the domestic and foreign clinical trial period that is confirmed by the competent authority of the central target industry of pharmaceuticals (Food and Drug Administration of the Ministry of Health and Welfare) as required for the issuance of drug licenses; since the audit data has been reviewed and confirmed by the Food and Drug Administration of the Ministry of Health and Welfare, therefore, the Taiwan Intellectual Property Office can use it as an identification standard for extending the patent term, and in the future, the current administrative procedure of submitting the information submitted by the applicant to the Food and Drug Administration of the Ministry of Health and Welfare for confirmation can be exempted.

References

Hyperlink：Regulatory Notice of the Intellectual Property Office, Ministry of Economic Affairs

Hyperlink：draft amendment explaination and clause comparison table

Lisa Lee

Patent Paralegal of RichIP Group

I. [CN] 　CNIPA’s Announcement for full implementation of the electronic patent certificate system(No. 515)

II. [CN]　Related Statistics of Chinese Patent and Trademark Cases

I. CNIPA’s Announcement for full implementation of the electronic patent certificate system(No. 515)

According to the Announcement No. 515 of the China National Intellectual Property Administration (CNIPA), the CNIPA will fully implement the electronic patent certificate system from February 7, 2023.

The party who applies for patent in electronic form and receives issuance of the patent may download the electronic patent certificate through the patent business handling system. The party who applies for patent in paper form and receives issuance of the patent may also download the electronic patent certificate according to the method notified in the “Notice of Obtaining the Electronic Patent Certificate” published by the CNIPA.

Lisa Lee

Patent Paralegal of RichIP Group

II. Related Statistics of Chinese Patent and Trademark Cases

Table 1. Statistics of patent issuance (domestic/foreign)

Note:

1. In this table, the number of patent issuances is calculated according to the date on which the patents are published.

2. In this table, domestic and foreign are divided according to the origin of applicants.

Table 2.      Statistics of domestic patent issuance by patentee type

Table 5.      Statistics of receiving number of PCT Patent Applications

Table 6.      Statistics of domestic and foreign trademark registrations and effective registrations

Note:

1. The cumulative statistical dates of the selected year are from December 16 of the preceding year to the 15th of the selected month.  Valid registrations are counted until the 15th of the selected month.

2.This Table quotes the data from the database of the Trademark Office at the end of the selected month.

Lisa Lee

Patent Paralegal of RichIP Group

I. [TW] 　12th edition of the Nice Classification and related updates to the metaverse and NFT

II. [TW]　Amendments to the Enforcement Regulations of Taiwan Patent Act

I. 12th edition of the Nice Classification and related updates to the metaverse and NFT

The Taiwan Intellectual Property Office (TIPO) have upgraded the recommended terms in e-filing system in accordance with the implementation of Nice Classification Version 12 on January 1, 2023 (fee waivers will be available for applications with all of the designated goods or services that are identical with the recommended terms).

This version reacts to the trend of digital development by including terms for the metaverse, virtual goods, and NFT.

Some of the relevant terms are listed below for your reference:

• Class 9: downloadable computer software for managing crypto asset transactions using blockchain technology, downloadable digital files authenticated by non-fungible tokens [NFTs].
• Class 41: providing online images, not downloadable, providing online virtual guided tours.
• Class 42: mining of crypto assets / cryptomining.

References

Hyperlink: TIPO Nice Classification, 12th Edition–Version 2023

Chun-Wei Lo

Patent & trademark Counselor

RichIP Group

II. Amendments to the Enforcement Regulations of Taiwan Patent Act

Ministry of Economic Affairs issued an announcement on “Amendments to the Enforcement Regulations of the Patent Act” on January 3, 2023.  The contents of the forecast amendments include the following issues:

1. New Paragraph 6 (as shown below) has been added to Article 17 of the Enforcement Regulations, and the original Paragraph 6 is renumbered as Paragraph 7.

Paragraph 6 of Article 17

When biological materials are deposited in a depository designated by a foreign country in its territory with which Taiwan recognizes the effects of deposits based on reciprocity, the certificate issued by such depository shall have the proof of survival of the biological materials.

2. New Paragraph 3 (as shown below) has been added to Article 28 of the Enforcement Regulations, and the original Paragraph 3 is renumbered as Paragraph 4.

Paragraph 3 of Article 28

If the contents of the specification of a divisional application are not fully identical with the contents of the specification of the parent application, the page(s) with underline for identifying the differences in the specification must be attached when filing the divisional application.

References

Hyperlink: Latest news from the TIPA

Jason hung

Patent Counselor of RichIP Group