JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

TIPO Statistics Report: Patent and Trademark Applications in 2017

[ April 2018 ] >Back

TIPO

I.	TIPO Statistics Report: Patent and Trademark Applications in 2017

	In 2017, 73,791 patent applications have been filed to the TIPO. This represents a growth rate of 2% a year. Invention patent applications grew by 5%. It terminates the negative growth for the past 4 years. Invention patent applications have a growth rate of 8% a year by residents (18,199 cases). Trademark applications hit a record high of 83,802 cases, the highest number of the past 5 years. As to examination efficiency, the average pendency for first office action of invention patent and trademark applications were shortened to 9 and 5 months respectively, while both pending applications were lowered to 44,002 and 46,385 cases respectively. Because TIPO implemented the fast-track measures and PPH pilot programs with other patent offices, examination pendency was decreased to the lowest level in 5 years. For the invention patent applications, the first office action pendency and disposal pendency were reduced to 9 and 16 months respectively in average. For the trademark applications, the pendency for first office action and total disposal of trademark applications were reduced to 5 and 7 months respectively in average.

	https://www.tipo.gov.tw/ct.asp?xItem=657088&ctNode=7123&mp=1

Patent

Taiwan and Canada Launched into the PPH MOTTAINAI program

On January 31, 2018, Taiwan and Canada signed the Memorandum of Understanding on the Patent Prosecution Highway between two countries, which came into effect on the next day, February 1, 2018. This is considered as another achievement by the Taiwan Intellectual Office (TIPO) after the PPH cooperation with the IP Offices in the US, Japan, Spain, South Korea and Poland.

The goal of this cooperation between TIPO and the Canadian Intellectual Property Office (CIPO) is to speed up the examination process for invention patent applications in two countries. By this way, the applicant can obtain its patent right quickly, and the applicant is able to develop his patent strategies in both countries to gain more benefit. The PPH program which TIPO and CIPO signed for is under the “MOTTAINAI” model. It allows the applicant to apply for the same invention in both countries, and when one office, either TIPO or CIPO, approves the claims, the applicant can request the other office to accelerate the examination process in a quicker manner. For example, when a Taiwanese applicant files an invention patent firstly in TIPO and later in CIPO, if the CIPO firstly gives the favorable decision to the said invention patent, the applicant can request for PPH in TIPO based on the favorable result. This cooperation aims to proceed with examination in a more efficient way to benefit the applicants in both countries.

Summary of the Patent Prosecution Highway (PPH)

There are two types of the PPH program:

(1)

Normal PPH: When partial or whole claims of an invention patent application are allowed to be granted after substantive examination in the Office of First Filing (OFF), the applicant can provide the Office of Second Filing (OSF) with related information to allow the OSF to exploit the search and examination results of the OFF. By this way, the examination of the said invention patent can be accelerated.

(2)

PPH MOTTAINAI: This enhanced version of PPH program is not restricted by the condition of First filing and Second Filing in the Normal PPH. When an invention patent has been determined to be patentable for partial or whole claims after the substantive examination in the Office of Earlier Examination (OEE), the applicant can request an accelerated examination at the Office of Later Examination (OLE) by providing the OLE with the search and examination results of OEE.

Countries with whom TIPO signed PPH Agreements

IP Office	Agreements	Enacted Date
US	Normal PPH	September 1, 2011
Japan	PPH MOTTAINAI	May 1, 2012
Spain	PPH MOTTAINAI	October 1, 2013
South Korea	PPH MOTTAINAI	July 1, 2015
Poland	PPH MOTTAINAI	August 1, 2017
Canada	PPH MOTTAINAI	February, 2018

https://www.tipo.gov.tw/ct.asp?xItem=656360&ctNode=7127&mp=1

II.

The Difference Between The Regulations Of Partial Design In Taiwan And In Japan (I)

According to the statistics of TIPO, Japan has always taken the lead in the number of design patent applications in Taiwan, and Taiwanese applicants also tend to apply for Japanese designs in a high number. For the applicants of the two countries’ better understanding, we specially analyze the differences of the partial design regulations in Taiwan and in Japan in terms of the definition of partial design, the disclosure of the drawings, the priority claim and the amendment.

The definition of partial design

Taiwan:

Under the present regulation in Taiwan, partial design means a part of the appearance of an article. The patentable subject matters of a partial design can be classified into three types.

(1)

A part of the components of an article

(2)

A part of the features of an article.

(3)

Combination of multiple components or features of an article.

The second type of patentable subject matter, “a part of the features of an article’, does not requires that the claimed feature must have a specific scope as a defined portion of the article. Thus, a part of the outline of an article can be applied as a partial design in Taiwan.

Examples of patentable subject in Taiwan:

Japan:

In Japan, “Partial Design” is defined as the shape, patterns or colors, or any combination thereof of a part of an article. The most important difference between the regulation in Japan and Taiwan is that in Japan, the claimed part of the article must occupy a specific scope of the form of the applied article as a whole.

Example of patentable subject in Japan:

The disclosure of the drawings

Taiwan:

(1)

Sufficient views for adequate disclosure:

In Taiwan, it is required to submit “sufficient drawings (views)” for adequate disclosure of the subject design. Thus, if the claimed partial design is in plane, at least one plane view will be sufficient for the disclosure. If the claimed partial design is a three-dimensional article, it is required to submit a perspective view along with other necessary views for adequate disclosure.

(2)

The claimed part and the unclaimed part:

In Taiwan, the unclaimed part of an article shall not be used to define the claimed subject matter of the partial design. Thus, it is not required to present the whole appearance of the applied article as long as the unclaimed part illustrated in the drawings can sufficiently disclose the position, proportion and displacement of the claimed part within the environment.

Japan:

(1)

Sufficient views for adequate disclosure:

In Japan, it is not required to submit a perspective view for three-dimensional designs. However, it is required to submit at least three drawings for a design application.

(2)

The claimed part and the unclaimed part:

In Japan, it is required to disclose the relative position, size and scope of the claimed part within the entire applied article of the design. Thus, it is required to illustrate the applied article as a whole in the drawings.

https://www.tipo.gov.tw/ct.asp?xItem=502601&ctNode=7151&mp=1

Trademarks

The Claim of “Unawareness of The Trademarks” May Not Be Accepted for the Defendant Who Often Sells Products on the Internet

	Trademark Registration No. 110464 designating trunks, suitcases, handbags, travelling bags, garment bags for travel, etc.
	Trademark Registration No. 1552668 designating boxes of leather and imitation leather, travelling bags, etc.

The defendant bought a handbag bearing the above trademarks for NTD800 as a gift to his wife from a flea market. Since his wife did not use the handbag, the defendant sold it on the website of Yahoo! Auctions for NTD1,200. The case was announced a verdict of trademark infringement by the New Taipei District Court. The defendant filed an Appeal. The judgment is as follows:

The defendant argued that he did not know the handbag is a counterfeit. The Judge mentioned that the trademarks at issue belong to the famous company in France, LOUIS VUITTON MALLETIER, which has been using the trademarks on leather goods for many years. The said company also sells, promotes and advertises their marks on the Internet, department stores and various advertising media. The good quality and high brand awareness have been affirmed by the market. Also, the prices of the products are high. Furthermore, based on the defendant’s age, work and life experience, it is not reasonable that the defendant totally knows nothing about the above trademarks. In addition, since the defendant is quite good at selling things via the Internet, he should be aware of the value of the brand of LOUIS VUITTON in view of the rapid spread of information on the Internet.

On the Court, the defendant argued that he often buys secondhand goods in the flea market and sells some of them on the Internet when buying too many. The Judge indicated that it shows that the defendant is familiar with selling things on the Internet for profit. Thus, the defendant should be more aware of the above trademarks and the price of the bags. The defendant used the short term “LV” when posting his sales information on Yahoo! Auctions and the general public knows that “LV” represents the bags from the company LOUIS VUITTON MALLETIER. Moreover, the price of the authentic LV bag is NTD16,800. The defendant bought the handbag with NTD800 which is far different from the price of the authentic bag and sold the counterfeit for the low price NTD1,200. Based on the said facts, it is not reasonable to believe that the defendant was not aware that the handbag is a counterfeit.

The Judge also mentioned that “Anti-Counterfeiting” has been a general social awareness in Taiwan. Since the defendant has a sound mind and intelligence, the argument of “unawareness” is not acceptable.

https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10999.htm

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

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