JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

TIPO Statistics Report: Patent and Trademark Applications in 2013

[ May 2014 ] >Back

Important Notice

I.	TIPO Statistics Report: Patent and Trademark Applications in 2013
	In 2013, patent and trademark applications filed with TIPO totaled 83,211 (-2.19%) and 74,031 (-0.44%) respectively, as compared to those of the preceding year. This represents the first-ever downward incline in the headway TIPO has made since the financial tsunami.
	Design Filings Grew, Despite Decreased Invention and Utility Model Applications:
	Figure 1　 Trends in Patent Applications

	Decline in Domestic Invention Applications: Figure 2 Patent Applications by ROC Nationals and Non-Nationals

	Proactive Design Patent Portfolios of Japan, the U.S. and Republic of Korea: Among top three patent filing countries, Japan (14,013), taking the lead for many years with continuous increase, topped the chart and outstripped those on the list. The U.S. (8,432) came second with a steady growth and the Republic of Korea (2,336) reclaimed its third position by outnumbering mainland China. As to growth rate, invention applications by Japan (12,419, -1.80%) and the U.S. (7,475, -1.12%) slipped slightly whereas the Republic of Korea (1,997, +13.72%) experienced the fastest growth. Mainland China (503), the frequent topper in utility model, suffered a slightly larger drop of 8.71%. In design applications, Japan (1,428, +16.19%), the U.S. (795, +46.41%) and the Republic of Korea (321, +181.58%) dominated the chart thanks to their adopting new measures of the amended Patent Act and their proactive portfolios (Table 1).
	Table 1 Top 10 Patent Filing Countries: 2012-2013

	TIPO Making a Significant Breakthrough in Patent Examination: Thanks to its fast-track measures and addition of manpower, TIPO in 2013 was able to conclude with an outstanding performance in patent examination, with examination number hitting an all-time high. The number of first office actions (64,958) issued in 2013 witnessed a 27.69% increase over the preceding year (Figure 3).
	Figure 3 Disposal of Invention Patent Examination

	Compared to 2012, the number of rendered decisions (67,346) was up 28.46%, exceeding that of substantive examination requests (43,395) (Figure 4). The first office pendency (7.08 months shorter than in 2012) for invention applications came to a five-year low, averaging 32.59 months; overall pendency averaged 41.33 months, also cut short by 4.81 months than the year before. In monthly average, pendency in December 2013 came down to 38.12 months. Because of marked examination efficacy, the number of pending invention applications has been gradually lowered from the peak (160,000) in 2011 to less than 130,000 (128,902), the lowest in five years (Figure 4).
	Figure 4 Trends in Concluded Examination

	Japan and U.S. Trademark Registration Applications Are in Decline: In trademark, registration applications (by case) filed with TIPO in 2013 totaled 74,031, representing a slight 0.44% decrease than in the preceding year (Figure 5).
	Figure 5 Trends in Trademark Applications

	Figure 6 Top 10 Trademark Filing Countries (By Case)

	Conclusion: With the new Trademark Act and Patent Act now fully in place, trademark holders and patentees will be better protected. In retrospect, patent and trademark applications slumped or remained relatively unchanged in 2013 except for design applications, which soared due to expanded scopes of subject matter resulting in more portfolios by foreigners. The said slump, on the other hand, may have been caused by Taiwan’s recent economic downturn and industrial transformation, reflecting in lukewarm applications or shifting trends in patent portfolios. However, we are pleased to see that the Republic of Korea, United Kingdom and Singapore experienced the fastest growth in Taiwan. Also, we are glad to see the TIPO’s marked examination efficacy. The number of pending invention applications has been gradually lowered in 2013.
	Source: TIPO Report dated March 14, 2014 (http://www.tipo.gov.tw/ct.asp?xItem=512852&ctNode=6687&mp=2)

Patents

I.	Regulations Governing Customs Detaining Goods Suspected of Patent Infringement Have Been Promulgated on March 24, 2014
		The amendments of Patent Act (Article 97-1 to 97-4) concerning border protection measures for patents have been implemented on March 24, 2014. Furthermore, the coordinating procedures and regulations concerning “Regulations Governing Customs Detaining Goods Suspected of Patent Infringement” have been promulgated on the same day. Main points of the “Regulations Governing Customs Detaining Goods Suspected of Patent Infringement” are:
	1.	A patentee requesting Customs to detain imported articles that are suspected of infringing the patent right(s) shall do so in writing to the customs offices of importation of such articles.
	2.	The required documents and information for applying for the said request are:
		(1)	document(s) of proof of the patent right(s); where a utility model patent right is concerned, the technical evaluation report of said utility model shall also be provided;
		(2)	a copy of the identity document(s), juristic person certificate(s) or other document(s) proving qualification of the detention requester.
		(3)	an infringement analysis report and sufficient description for identifying the suspected infringing articles, along with other information including samples, photos, catalogs or pictures of the suspected infringing articles as well as the electronic files thereof.
		(4)	a sufficient description enabling Customs to identify the articles to be detained, such as the name of the importer, the business administration number or I.D. card number thereof, import declaration number, name, type or specification of the articles, possible importing date, port or vehicle.
		(5)	a power of attorney, if the detention request is filed by an appointed agent.
	3.	The detention requester shall, upon immediate notice from Customs, provide a security amounting to the duty-paid price of the imported articles, as assessed by Customs and file a litigation claiming that the detained articles infringe the patent right(s) and notifies Customs of such filing within twelve (12) days following the date of receipt of Customs’ written notice. The owner of the detained articles requesting Customs to repeal detention shall do so in writing to the customs offices of importation of such articles, accompanied by a security or equivalent assurance amounting to two times the duty-paid price of the imported articles. Customs shall retain a representative sample and then repeal the detention.
	4.	Prior to carrying out the detention, Customs may ask the detention requester to provide assistance. The detention requester or the owner of the detained articles requesting Customs for examining the detained articles, but should refrain from compromising confidential information protection of the detained articles.
	5.	The detention requester or the owner of the detained articles filing a request with Customs for the return of the security or assurance should provide, if applicable, the following document(s):
		(1)	a copy of a judgment of the court along with a copy of a certificate stating the judgment is final and binding, or a copy of document which legally have the equivalent effect as a final and binding judgment of the court;
		(2)	a copy of a settlement agreement;
		(3)	a copy of the document proving that the other party has been notified to exercise the right within a specified time period of no less than twenty (20) days but has yet to do so within the said period;
		(4)	a copy of the document proving that the other party has agreed upon such return.
	In view of the effectiveness of the border protection measures for patents in Taiwan, the clients’ patent rights can be protected more completely. Please feel free to contact us if you need more information on this matter.
	Source: TIPO Newsletter issued on April 05, 2014 (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8043.htm)

II.	TIPO and JPO Modified Current PPH to Pilot Run PPH Mottainai and Extended for Three Years from May 01, 2014
	The TIPO-JPO Patent Prosecution Highway (PPH) pilot program currently has been modified to PPH Mottainai and extended for three years starting on May 1, 2014. This modified pilot allows for greater conveniences to applicants and further accelerates patent examination at both offices. As of the end of March 2014, TIPO had received 817 requests for expedited examination since the launch of the TIPO-JPO PPH pilot in May, 2012. Considering the success of this program, which expired by the end of April, 2014, both offices have agreed to modify the current program into PPH Mottainai and continue its pilot run for three more years starting on May 1, 2014. Specifically, this new PPH Mottainai is an enhanced version of the PPH programs signed with other IP offices. Under this new pilot, the examination result of the office of first filing (OFF) no longer has primacy over that of the office of second filing (OSF). In other words, if one of the signing parties (OFF or OSF) has already issued an examination result, the applicant may use such result to file a request for PPH with the other party. For instance, the applicant having first filed a patent application with TIPO (OFF) and then with JPO (OSF) for the same creation may file a request for PPH with TIPO using the examination result first issued by JPO. This is where the new PPH Mottainai is different from other PPH programs. The new pilot will not only facilitate greater conveniences to applicants but also spur patent examination at both offices.
	Source: TIPO News published on May 1, 2014 (Chinese:http://www.tipo.gov.tw/ct.asp?xItem=516993&ctNode=7127&mp=1) (English:http://www.tipo.gov.tw/ct.asp?xItem=517072&ctNode=6687&mp=2)

Trademarks

I.	The Judgment of Trademark Likelihood Confusion

	(The trademark in dispute) (The cited trademarks)
	According to “Examination Guidelines on Likelihood of Confusion” for trademarks, when two trademarks are considered similar, the overall impressions conveyed by the two trademarks are similar. If they are labeled on the same or similar goods/services, consumers with common knowledge and experience, who exercise a normal level of attention when shopping, may be confused about the two kinds of goods/services as coming from the same source or from different sources of related nature, or may not misidentify two trademarks as the same one, but are most likely to misidentify the goods/services offered under two trademarks as a series of goods/services from the same source, or misidentify the users of the two trademarks as having an affiliation, license, franchise or any other similar relationship. In judging whether two trademarks are likely to cause confusion, eight relevant factors for consideration are listed below after referring to the relevant factors stated in domestic and foreign precedents:
	(1)	level strength of distinctiveness of the trademark(s);
	(2)	whether the trademarks are similar and if yes, the extent degree of similarity between them;
	(3)	whether the goods/services are similar and if yes, the extent degree of similarity between them;
	(4)	status of the diversified operation of the prior right holder;
	(5)	circumstances of actual confusion;
	(6)	the extent to which relevant consumers are familiar with the trademarks concerned;
	(7)	whether the applicant of the trademark at issue in question has filed such application in good faith; and
	(8)	other factors that may cause confusion.
	The above trademark in dispute contains the Chinese part “阿里巴巴”, a device and the English part “ALIBABA”. The cited marks for the opposition are registration No. 1423424 “阿里巴巴云计算”(simplified Chinese) and No. 1413497 “ALIBABA CLOUD COMPUTING”, in which “云计算” and “CLOUD COMPUTING” are disclaimed due to lacking distinctiveness. The distinctive parts of the trademark in dispute and the cited marks are both “阿里巴巴” or “ALIBABA” which are also extremely similar. The general consumers will be confused about the two kinds of goods/services as coming from the same source or from different sources of related nature. As to the designated goods, the trademark in dispute designated the goods about toys and game instruments in Class 28. The cited marks designated the goods containing “TV games” in Class 09. The consumers with common knowledge and experience will regard “TV games” a kind of game instruments. They have the same using purposes and functions. In addition, the main consumers for these two kinds of goods are children and teenagers. So, both trademarks are labeled on the same or similar goods due to the similar using purposes, functions, consumer groups and sales channels. Although the plaintiff argued that the registrant of the cited marks failed to submit the evidence of use for “TV games”, it is not one of the factors to judge the likelihood of confusion of the trademarks. So, the trademark in dispute was deemed similar to the cited marks and thus was opposed.
	Source: TIPO Newsletter issued on April 05, 2014 (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8043.htm)

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

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