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TIPO Beginning to Accept a Request for the Postponement of Substantive Examination from April 01, 2015he TIPO Expediting the Substantive Examination of Pending Invention Applications and Making a Breakthrough in Patent Examination for Greater Than 70 Thousand Applications in 2014

[ May 2015 ] >Back
Patent 
 
I. TIPO Beginning to Accept a Request for the Postponement of Substantive Examination from April 01, 2015
 
An applicant of invention patent application may request for the postponement of substantive examination within three years from the filing date of the invention patent application as long as such request doesn’t meet any of the following conditions:
 
  (1) the invention patent application has received an official action or decision;
  (2) the invention patent application has applied for a divisional application;
  (3) the substantive examination was requested by a third party rather than the applicant;
  (4) the invention patent application has applied for expediting the examination based on AEP or PPH.
 
Suitable time for requesting for the postponement of substantive examination:
  (1) simultaneously while requesting for substantive examination;
  (2) after the request of substantive examination but within three years from the filing date of the invention patent application no matter whether the application claims priority or not.
 
Official fee for requesting for the postponement of substantive examination: NIL
  Furthermore, the applicant has to indicate the specific date when the examiner should continue the substantive examination in the application form.  Such date should be within three years from the filing date of the invention patent application.

As soon as the date indicated comes, the application will be arranged into the sequence of applications filed in the same year for examination in order.
 
Effects:
  (1) The request for the postponement of substantive examination won’t influence the laid-open date.
  (2) The applicant may withdraw the request for the postponement of substantive examination.  Once the request is withdrawn, the applicant is not allowed to request the postponement of substantive examination again.
  (3) After the applicant requests for the postponement of substantive examination, he/she is allowed to change the date indicated for the examiner to continue the substantive examination but the date he/she would like to change should be within three years from the filing date of the invention patent application.
 
Should you require any further information, please feel free to contact us. 
 

Source: TIPO Newsletter issued on April 05, 2015
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8774.htm) 
 
II. Background Arts Indicated in the Description of a Patent Application Can be Cited as Evidence to Invalidate the Same Patent
 
When filing a patent application for invention, the applicant is required to contain the background arts which he/she is aware of in the description of the patent application. In addition, the application has to disclose the problem(s) existing in the background arts that the invention aims to solve and its technical solution adopted to solve the problem(s) objectively.  When describing the foregoing, the applicant should quote the names of the background arts as far as possible in the application and may submit relevant materials reflecting such arts.  This is to enable the examiner to comprehend the connection between the invention and the background arts so as to proceed with search and examination. The aforesaid are all proclaimed in writing in Patent Act, Enforcement Rules of the Patent Act and Regulations of Examination in Taiwan. 

The background arts contained in the description of the patent application not only belong to the same technical field of the invention but exist prior to the filing of the invention, so they certainly can be cited as evidence to invalidate the same invention patent.
 

Source: TIPO Newsletter issued on March 05, 2015
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8713.htm) 
 
III. TOP 10 Foreign and Domestic Applicants for Patent Filings in 2014 in Taiwan
 
※Top 10 Domestic Applicants for Patent Filings in 2014
 
 
Rankings Domestic Applicants Invention Utility Model Design Total Amount
1 Hon Hai Precision Industry Co., Ltd. 1,081 42 87 1,210
2 Industrial Technology Research Institute 445 24 0 469
3 Taiwan Semiconductor Manufacturing Company Limited 430 0 0 430
4 Acer Inc. 353 44 18 415
5 AU Optronics Corp. 374 32 5 411
6 Far East University 44 305 1 350
7 Wistron Corporation 280 58 4 342
8 China Steel orporation 125 111 0 236
9 Inventec Corporation 219 0 4 223
10 Innolux Corporation 191 20 0 211
 
※Top 10 Foreign Applicants for Patent Filings in 2014
 
 
Rankings Foreign Applicants Invention Utility Model Design Total Amount
1 NITTO DENKO CORPORATION (JP) 466 3 0 469
2 APPLIED MATERIALS, INC. (US) 443 8 4 455
3 LG CHEM, LTD. (KR) 419 0 0 419
4 FUJIFILM CORPORATION (JP) 368 25 6 399
5 INTEL CORPORATION (US) 394 0 0 394
6 TOKYO ELECTRON LIMITED (JP) 361 0 4 365
7 KABUSHIKI KAISHA TOSHIBA (JP) 337 0 20 357
8 QUALCOMM INCORPORATED (US) 311 0 0 311
9 APPLE INC. (US) 259 4 31 294
10 SEMICONDUCTOR ENERGY LABORATORY CO., LTD. (JP) 271 0 16 287
 

Source: TIPO News published on February 09, 2015
(http://www.tipo.gov.tw/ct.asp?xItem=541757&ctNode=7123&mp=1) 
 

Trademark 
 
I. DR. WU vs. DR. HU
 
Trademark at issue Class Goods
Reg. No. 01531004
 03 Beauty masks, cosmetics, Permanent waving lotions, Hair colorants, Body wash [for humans]
Registrant (the Plaintiff): SHINE & HUGO INTERNATIONAL CORP. (hereinafter “SHINE & HUGO”)
 
Trademarks cited as the bases for opposition Class Goods
Reg. No. 01176996
 03 Cosmetic preparations for skin care, Beauty masks, Eye masks, Lotions for cosmetic purposes, Milks [cosmetics], Facial cream, Cleansing milk, Cleansing cream, Facial soap, Facial cleanser, Sunscreen preparations, Sun block, Sunscreen cream, Massage creams, not medicated, Facial scrubs, Hand emulsion, Shampoos, Hair conditioners, Bath concentrate, Cosmetics.
Reg. No. 01276721
 03 Cosmetics, Body wash [for humans], Perfumery, Bath tea bags, Breath freshening sprays
Reg. No. 01276722
 03 Cosmetics, Body wash [for humans], Perfumery, Bath tea bags, Breath freshening sprays
Opponent (the Intervening party): DR.WU SKINCARE CO., LTD. (hereinafter “DR.WU”)
 

Facts:
  “SHINE & HUGO” filed the trademark at issue “DR.HU” on May 4, 2011 and was granted to register under No.01531004 on August 16, 2012.

“DR.WU” deemed that the trademark at issue “DR.HU” (No.01531004) was similar to their trademarks “DR.WU”, so filed an opposition up to TIPO against the trademark at issue “DR.HU” (No.01531004) on September 19, 2012.

TIPO regarded that the trademarks from both parties are distinct enough to distinguish from each other and would not cause confusion to the relevant consumers so overruled the opposition.

“DR.WU” then filed an appeal up to the MOEA (the higher authority of TIPO) against TIPO’s original decision. MOEA cancelled TIPO’s original decision and requested TIPO to make a proper decision again.

“SHINE & HUGO” had an objection to MOEA’s decision, so filed an administrative litigation up to the IP Court.
 
  IP Court’s viewpoints:
  1. Comparing the trademarks of two parties, all of them consist of the same elements: the letters “D”, “R” and “U” as well as the punctuation mark “.” and the only difference is one letter in each mark, “H” and “W”. Thus, DR.HU is similar to DR.WU in the overall appearance.
 
  2. “HU” and “WU” are pronounced as [hu] and [wu] respectively. So, the pronunciation of English words of both parties’ trademarks sounds similar as well. 
 
  3. Because of the similar appearance and pronunciation between DR.HU and DR.WU, it’s easy for relevant consumers to interpret them by the same concept idea as “Doctor somebody”.
 
  4. Although the trademark at issue contains the Chinese words, they are merely Chinese translation of DR.HU and appear in a smaller portion of the trademark at issue. 
 
  5. The goods of the trademark at issue and the trademarks cited as bases for opposition are common or related in functions, raw materials, manufacturers and usage. According to general concepts prevailing in the society or trading situations in the marketplace, the goods of those trademarks are regarded as the same or similar goods. 
 
  6. In addition to the similarity among those trademarks, it is likely to cause consumers of goods to misidentify them as goods from the same source, or different but related sources, or misidentify the users of the trademarks as having an affiliation, license, franchise or any other similar relationship.
 
  7. The distinctiveness and reputation of the trademarks cited as the bases for opposition have been widely recognized by consumers before the trademark at issue was filed on May 04, 2011. 
 

IP Court’s Decision:
 
The trademarks of both parties are similar in the overall appearance, pronunciation and concept so it is likely to cause confusion to consumers of goods. Therefore, IP Court made a ruling to dismiss the plaintiff's action. 
 

Source: Decision made by IP Court on October 30, 2014 (No.103, 86)
(http://jirs.judicial.gov.tw/Index.htm) 
 
II. Trademark Applications by Top 10 Nationalities in first Quarter of 2015
 
Ranking Nationality Application Ranking Nationality Application
1 US 888 6 Germany 227
2 China 847 7 France 162
3 Japan 801 8 Switzerland 152
4 Hong Kong 318 9 Virgin Islands (British) 136
5 Korea 284 10 UK 117
 

Source: TIPO
(http://www.tipo.gov.tw/ct.asp?xItem=420263&ctNode=7061&mp=1) 

 

 

 

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