LEGAL NEWS AND CASE DEVELOPMENT

TIPO announced statistics for the Accelerated Examination Program (AEP) on Invention Patents during the period of 2018 January

During to the period of 2018 January, there were 25 patent applications filed under the accelerated examination program (AEP), in which 13 were filed by domestic applicants and 12 were by foreign applicants. The top four foreign applicants by nationality were: Japan (4); U.S.A. (2); France (1) and United Kingdom (1).

Among the applications, nine were filed under Category 1 (i.e., the corresponding application has been approved by a foreign patent authority after substantive examination), and the first office action in those matters (including examination opinions and final decisions) was issued in an average of 71.1 days. Four applications were filed under Category 2 (i.e., the EPO, JPO or USPTO has issued an office action during substantive examination but has yet to approve the application’s foreign counterpart), and the first office action therein was issued in an average of 78.9 days. 11 applications were filed under Category 3 (i.e., the invention application is essential to commercial exploitation), and the first office action therein was issued in an average of 129.8 days. One application was filed under Category 4 (i.e., inventions are related to green technologies), and the first office action therein was issued in an average of 95.9 days. 

The TIPO Published the Top 100 Patent Applicants in 2017

The TIPO Published the Top 100 Patent Applicants for Filings and Grants in 2017. For filing, the top three domestic applicants are as follows: Taiwan Semiconductor Manufacturing Company, Limited (937), Hon Hai Precision Industry Company Limited (485), Industrial Technology Research Institute(451); and the top three foreign applicants are as follows: Alibaba Group(762), Qualcomm(604), Applied Materials, Inc.(493). For grants, the top three domestic applicants are as follows: Hon Hai Precision Industry Company Limited (756), Taiwan Semiconductor Manufacturing Company, Limited (605), Industrial Technology Research Institute(580), and the top three foreign applicants are as follows: Intel Corporation (968), Semiconductor Energy Laboratory(671), Tokyo Electron Limited (415).

TIPO announced the statistics of Patent Prosecution Highway (PPH) during the period from January through February of 2018

During from January through February of 2018, there were 62 patent applications filed under the Taiwan-U.S. PPH; 57 applications filed under the Taiwan-Japan PPH; zero application filed under the Taiwan-Spain PPH; 5 applications filed under the Taiwan- Korea PPH; and zero application filed under the Taiwan- Poland PPH. 

Taiwan-Canada PPH MOTTAINAI program comes into effect

Taiwan-Canada PPH MOTTAINAI program will come into effect on February 1, 2018. This PPH program will speed up the examination process for invention patent applications in both countries, allow applicants to get patents in a quick manner, and benefit industries on both sides on their patent portfolio strategies. Under this scheme, after applicants apply for patent for the same invention in both countries, when they get positive examination results from either patent office, they will be eligible for the PPH at the other office, thereby accelerating the examination process. For example, in the event that a Taiwanese national applies for an invention patent firstly to TIPO and later to the CIPO, if a favorable decision is firstly given by the CIPO, the applicant will then be eligible to request for the PPH at TIPO. The cooperation program will make the patent examination process faster and more efficient. 

Amendment to the Pharmaceutical Affairs Act in regard to data exclusivity came into effect on January 31, 2018.

Under the amended Pharmaceutical Affairs Act, there is (a) three-year data exclusivity for the holder of drug approvals of new drugs with new ingredients, and (b) two-year data exclusivity for the holder of drug approvals of newly added indications or change of indications if the application for such drug is filed with MOHW within 2 years after it obtains the approval in other foreign countries. Accordingly, a generic drug manufacturer shall not allowed to assert or rely on any data stated in the application for an approved drug filed by another (“Data”) when applying for drug registration within the exclusivity period, unless the holder of the drug approval so consents. The data exclusivity period is counted from the issuance date of the aforesaid drug approvals.

Although one may assert or rely on the Data upon the expiration of the data exclusivity period, MOHW will not issue the drug approval until the next day of the expiration of (a) five years for new drugs with new ingredients and for a drug with newly added or change of indications if the clinical trial for such indication is conducted in Taiwan, or (b) three years for a drug with newly added or change of indications, after the issuance date of the new drug approval whose Data is asserted or relied on. In the event that a marketing approval has already been granted for new drugs with new ingredients in a foreign country, the three-year data exclusivity shall only apply when the application for drug registration of said new drug is filed with the central health authority (i.e., the Ministry of Health and Welfare) within 3 years from the issuance date of the foreign marketing approval. 

TIPO released statistics for trademark applications for the fourth quarter and full-year of 2017.

Compared to Q4 2016, the total number (21,244) of trademark applications in Q4 2017 increased 0.4%. Among them, domestic applications (14,957) decreased 3% and foreign applications (6,287) increased 8%.

In full-year 2017, TIPO received a total of 83,802 trademark applications, the highest annual amount over the past five years. By nationality of foreign applicants, mainland China (4,830) ranked first, followed by Japan (3,892), U.S.A. (3,684), Hong Kong (1,579) and Korea (1,521). 

The IP Court held that the registration of the opposed mark “多納滋” should be revoked since it is highly similar to the cited well-known mark “多那之” and the goods or services designated by the marks in dispute are highly related, and hence is likely to cause confusion to the relevant consumers

The IP Court held in its Judgement 106-Hsin-Shan-Su-Tze No. 52 that the opposed mark “多納滋(pronounced Duo-Na-Tzu)” filed by ProGrand Development Enterprise Co., Ltd. is highly similar to Donutes Corporation’s cited well-known mark “多那之(pronounced Duo-Na- Chih)”, comparing the goods “animal foodstuffs,…, pet food, beverages for pets” designated by the opposed mark in Class 31 to the goods “coffee, cakes, bread, etc.” and the service “coffee shop” designated by the cited mark in Classes 30 & 43, although the aforesaid goods/services are provided for pets and human, separately, however, considering that the consumers, functions, materials, manufacturers, and channels of trade of the aforesaid goods/services are common or highly related, the relevant consumers may be confused and are likely to misidentify the goods/ services offered under the trademarks in dispute come from the same or related sources. Hence, the registration of the opposed mark “多納滋” shall be revoked in accordance with the former part of Article 30-I-(11) of the Trademark Act. 

The Petitions and Appeals Committee of the Ministry of Economic Affairs (“PAC”) held that the opposed mark “” is similar to the cited mark “”, and the registration of the opposed mark designated on the same or similar goods and services should be revoked

The PAC ruled on December 27, 2017 that the cited mark has distinctiveness, and the mere difference between the opposed mark “” and the cited mark “” were capital letters or small letters as well as the suffix “DS”, and the device of the opposed mark is similar to the number “7” contained in the cited mark, the degree of similarity between both marks is high. In addition, part of goods and services in Classes 18 and 35 covered by the opposed mark are the same or similar to the designated goods “leather; purse”, etc. in Class 18 covered by the cited mark, both marks were designated to the same or similar goods/services. The PAC therefore reversed the TIPO’s denial of the opposition to registration of the opposed mark, and ruled that the registration of the opposed mark to the extent that the mark was designated to part of goods and services in Classes 18 and 35 shall be revoked. 

The Intellectual Property Court held that the patent of Rohm and Haas Electronic Materials CMP Holdings, Inc. (“R&H”) was invalid on the ground that the claims lacked inventive steps

On April 12, 2018, the administrative chamber of the Intellectual Property Court upheld TIPO’s decision finding that Claims 1-2 and 5-7 of R&H’s patent (Taiwan Patent No. 28+089) were invalid by reason of lack of inventive steps, and dismissed R&H’s administrative action. Tsar & Tsai represented NexPlanar Corporation who filed the invalidation action against the patent in the proceedings.