Exclusive Q&A on Intellectual Property with Mr. Tsai

Have there been any recent regulatory changes or interesting developments?
 
Tsai: The Taiwan Intellectual Property Office recently submitted the draft Patent Law Amendment to the Executive Yuan and is expected to be passed soon. Some of the key aspects of the amendment are as follows:
 

• A Patent Trial and Appeal Board (PTAB) will be established. This new agency will deal with appeals of TIPO’s rejections of patent applications, patent term extension requests and procedural requests. Also, post-grant amendments, compulsory license requests and invalidation actions will be handled by the board whose official name will be The Patent Committee for Review and Dispute Resolution. The PTAB will be composed of senior patent examiners and legal experts, and a panel of three or five members will be formed to hear each case.
• The administrative appeal system will be adjusted. The Petitions and Appeals Committee will be replaced by the PTAB, and the PTAB will replace the existing re-examination mechanism within the TIPO, thus becoming the first tribunal to hear an invalidation action. For invalidation actions, the PTAB will examine invalidation actions on the basis of the adversary system by holding oral hearings.
• The time limit for filing divisional applications will be changed. The time limit in future will be before issuance of the PTAB decision on an application or within three months from the date of receipt of a Notice of Allowance issued to an application. These rules will also apply to design and utility model applications too.
• The grace period of six months after the disclosure of a design application and before filing will be extended to 12 months.
• In a dispute over the ownership of the right to apply for a patent or the patent right, the true owner of the right may apply to the court for a provisional injunction or an injunction maintaining a temporary status quo. The new amendment now also allows the true owner of the right to request TIPO to suspend the examination, reviewing or other relevant procedures concerning the patent application or patent. The period of suspension is limited to three months, after which TIPO can resume the procedure. Also, the patentee shall not abandon the patent right before a final and binding judgement is rendered by the court, a mediation settlement is reached or an arbitration proceeding is terminated.

 
Have there been any recent noteworthy case studies or examples of new case law precedent?
 
Tsai: In October 2021, the Taiwan Intellectual Property Office has revised the Examination Criteria on Likelihood of Confusion after referring to the guidelines of the EUIPO, JPO, the USPTO, and the judicial practice in Taiwan. The aim is to provide trademark examiners with even more specific guidelines on evaluating the likelihood of confusion when examining trademark applications. The key points are:
 

• Regarding similarity between trademarks, the revision has laid down principles for evaluating the degree of distinctiveness of trademark elements, assessing each trademark as a whole, facilitating comparisons between individual parts of compound word marks, and judging the similarity between existing words/phrases and phonetic characters, comprehensively illustrated with examples.
• Regarding the similarity of goods and services, an additional criterion, points of sale, was included in the list of determining factors for the degree of similarities between goods and services. Definitions of goods/services that are considered in competition, complimentary, or auxiliary/ancillary in relation to specific other goods or services, and supplemental information pertaining to the relations between the goods and their components, raw materials, or semi-finished products, respectively, were also incorporated into the revision.
• Several determining factors were modified, such as whether the business of the proprietor of the earlier registered trademark pursues a diversification strategy, whether the trademark applicant possesses a bona fide intent, and the factors for being obviously improper, are part of the proviso of Article 30 of the Trademark Act.

 
It is worth observing how the TIPO will apply the new standards for examining ‘likelihood of confusion’ in the future.
 
How has COVID-19 impacted the intellectual property landscape?
 
Tsai: It seems COVID-19 has not significantly impacted the intellectual property landscape in Taiwan. Take the Taiwan Patent and Trademark Applications in 2021 for example:

• Resident invention applications were the highest since 2014 at 19,547 cases mostly fuelled by a rise in the number of applications by corporations. However, utility model (14,543 cases) and design applications (3,534 cases) filed by residents went down by 12% and 10% respectively due to lower numbers from the corporation and individual sectors.
• Overall patent applications increased by one per cent to 72,613 cases. Of these, invention patent applications (49,116 cases) grew by five per cent, while utility model (15,796 cases) and design patent applications (7,701 cases) decreased by 10% and four per cent respectively. For trademark applications, both resident and non-resident, 95,917 cases were filed, and that was the highest number recorded ever since TIPO was founded in 1999.
• Looking at non-resident patent applications, Japan held the top spot with 13,324 overall applications, followed by the U.S. with 7,986 cases, China with 4,253 cases and South Korea at 2,388 cases. Looking at trademark-filing countries, China was the leader with 4,929 cases, followed by the U.S. with 4,032 cases, and Japan with 3,437 cases. Interestingly, Class 35 (business operation) and Class 9 (computer and technology products) reported the strongest growth in resident and non-resident trademark filings respectively. Locally, Uni-President was the top-ranked applicant with 567 cases, followed by Taiwan Family Mart with 180 cases. A significant reason for the increases in applications in 2021 was the improved examination efficiency with the average disposal pendency dropping to less than 14 months for invention patent applications and 6.2 months for trademark applications.

 
Opportunities and challenges surrounding many new technologies – such as artificial intelligence and machine learning – were unforeseen at the time many regulations were enacted. To what extent does this create ‘grey areas’ and what can clients do to best protect themselves?
 
Tsai: The patent player must understand that the invention of artificial intelligence or machine learning is typically categorised as computer software-related invention in Taiwan. In 2021, the Taiwan Intellectual Property Office (TIPO) announced changes to the guidelines on software patent applications as a response to the latest developments in that field. The purpose of the revisions is to specify the types of computer software-related inventions that comply with the invention definition as stated in Article 21 of the Patent Act, highlight the factors that determine the inventive step and prescribe that AI inventions are subject to statutory exclusion under Article 24 of the Patent Act. An invention is defined as the creation of a technical idea, and in software terms that could be controlling a machine or its relevant processes, or computing or processing data, which demonstrates the technical properties of an object. The guidelines outline what software doesn’t reach the standard of inventiveness, such as mathematical formulas, an artificial rule, any aspect of human mental activity and practicing a business method. Also, if a computer software-related invention utilises a program, artificial neural network or AI to execute a method for processing information related to medical treatment, which pertains to diagnostic, therapeutic and surgical methods for the treatment of humans or animals, then the method invention is not regarded as acceptable subject matter and will not be approved for an invention patent.
 
Therefore, if an applicant would like to file a patent for an invention in the field of artificial intelligence or machine learning, it is suggestible to confirm with the local agent in Taiwan to know whether the invention can meet the requirements of the new examination guidelines.
 
What measures are in place to prevent counterfeit products entering the market?
 
Tsai: Our legal system provides for Customs seizure of counterfeit goods. A Customs seizure procedure for counterfeit goods is typically as follows:

• Customs find that the imported or exported articles are obviously likely to be counterfeit (infringing articles).
• Customs gives notice to the trademark owner or its representative or agent in Taiwan and requires it to travel to the Customs office for identification, generally within 24 hours. Customs gives notice to the importer or exporter at the same time and requires its provision of relevant evidence of non-infringement.
• The trademark owner identifies the articles as counterfeit and provides relevant evidence of infringement.
• The importer or exporter provides relevant evidence of non-infringement.
• The trademark owner files an application for seizure of the articles with Customs.
• Customs seizes the articles.
• The trademark owner brings a trademark infringement action before the IP Court and gives notice to Customs.

 
What are the best practice procedures for managing large IP portfolios?
 
Tsai: The interested party should establish a team with members having expertise in IP-related law (e.g. patents, trade secrets, plant varieties, or lay-out designs for integrated circuits). The team should include members having relevant technical backgrounds, and have the ability to develop effective strategies, deploy and manage its global IP portfolios, negotiate global IP assignment or licensing, mobilive its resources to periodically conduct global market investigations, and maintain proper cooperation with local counsels.
 
The team should also undertake general preparations and procedures such as (i) ensuring the IP rights are valid with a certain level of invincibility, preferably confirmed by a local counsel; (ii) identifying which IP rights are infringed with at least a preponderance of evidence, preferably confirmed by a local counsel again; (iii) collect sufficient evidence before filing a lawsuit; and (iv) maintain effective communication with the local counsel to ensure consistent information.
 
 
What are the steps for gaining a patent term extension (PTE) in your jurisdiction?
 
Tsai: Where a regulatory approval shall be obtained in accordance with other laws and regulations for the exploitation of an invention patent involving a pharmaceutical or agrichemical, or the manufacturing process thereof, if such regulatory approval is obtained after the publication of the concerned invention patent, the patentee may apply for one and only one extension of the patent term of said invention patent based on the first regulatory approval. The regulatory approval is allowed to be used only once for seeking patent term extension.
 
The extension of the patent term shall not exceed the length of time when the patent cannot be exploited because of the filing of a request for the regulatory approval. If the time needed to obtain the said regulatory approval exceeds five years, the granted patent term extension shall still be five years.
 
When requesting for patent term extension, a request form and document(s) of proof must be submitted to the TIPO within three months after obtaining the first regulatory approval; no request for patent term extension shall be filed within six months prior to the expiry of the original patent term.
 
The request for patent term extension shall be made in writing and signed or sealed by the patentee or an agent thereof indicating the following:

• patent certificate number;
• title of invention;
• patentee’s name, nationality, domicile/residence or business establishment; name of representative, if any;
• reason(s) and term for extension; and
• date of the regulatory approval first obtained.

 
Two copies of the regulatory approval obtained in accordance with applicable laws and domestic and/or foreign document(s) of proof of regulatory approval application shall be provided together with the written request.
 
Since October 1982, Mr. Tsai has indulged himself in experiencing all phases of intellectual property law, from preparation to prosecution and then to litigation of patents, trademarks, copyrights, circuit layouts, trade secrets, unfair competition and licensing issues before courts in this country and others.

Brainpower, perseverance and stamina are considered to be most important factors of successful character.  Rich in analytical capacity, stiff in perseverance and with inexhaustible stamina, Mr. Tsai strives to keep pace with all relevant knowledge and practices relating to intellectual property law.  Although he is self-confident, he always reminds his staff that there are oftentimes many kinds of traps, and there is a chance that anyone, including himself, might make a mistake while performing any kind of task.

Mr. Tsai is the first patent practitioner in this country who has both technological and legal backgrounds and is qualified as a local attorney-at-law. 
 
Mr. Tsai can be contacted on 886-2-25856688 ext.8139 or by email at yltsai@deepnfar.com.tw