The Greater China IP Updates – June 2022

TIPO Finalizes Draft Amendments to Taiwan’s Patent Law

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:

1. 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 3 or 5 members will be formed to hear each case.
2. 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.
3. 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 3 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.
4. The grace period of 6 months after the disclosure of a design application and before filing will be extended to 12 months.
5. 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 3 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. 

TIPO Issues Briefs of Classic Trademark Cases

To assist domestic and foreign market participants and people from different sectors in further understanding the latest development of trademark-related laws and judicial opinions, the Taiwan Intellectual Property Office has selected classic judgements made by the Intellectual Property and Commercial Court in the last 5 years for 7 outstanding and significant cases.  The content of these cases has been translated into English and is available to be downloaded in pdf format from the TIPO website.  The content of these case briefs contains many important issues in the trademark field, including how to determine the scope of goods in connection with which the trademark has been put to genuine use, the territorial limitation on the use of the trademark, the determination of the likelihood of confusion between trademarks with low degree of similarity, whether the protective scope varies among well-known trademarks due to different levels of fame, the determination of the parody defense related to trademark infringement, keyword advertising and the determination of trademark infringement, and the application of the defense of trademark exhaustion among other pertinent issues.

TSMC Files over 75,000 Patent Applications Worldwide in 2022 So Far

Taiwan Semiconductor Manufacturing Co. (TSMC), the world’s largest contract chipmaker, filed more than 75,000 patents worldwide as of May this year, with over 52,000 applications securing approval.  It was also the largest patent applicant for the sixth year in a row in 2021.  In the United States, TSMC was the third-largest patent applicant for the second straight year in 2021.  In Taiwan, TSMC filed 1,950 invention patents in 2021 – a 78% increase from the previous year.  TSMC said the filings were part of an intensified effort to upgrade its technologies and stay ahead of its competitors in the global market.  The company also mentioned that it had set up a comprehensive patent management system involving patent planning, patent filing, patent using, patent protection and anti-patent infringements.  10 innovation forums have been held so far over the past two years to further facilitate new patent development.

Measures for Expedited Examination of Trademark Registration Applications in China

In January 2022, the State Intellectual Property Office issued the Measures for Expedited Examination of Trademark Registration Applications, which clarify the circumstances under which expedited examination of a trademark registration application may be requested.  Expedited examination can be requested in the following circumstances:

1. The application involves the names of major construction projects, scientific and technological infrastructure, competitions and exhibitions, for which trademark protection is urgent.
2. The application has a direct connection to a public incident involving social security or public health.
3. The trademark is needed for improving the development of the economy or society.
4. Any situation that has implications for national interest or regional development strategies.

In addition, the trademark registration application must be agreed upon by all the applicants, the application must be filed electronically, and no priority right is requested.  The expedited examination procedure can be terminated under various circumstances where expedited examination is not possible, such as if the application must be corrected or further explained.    

Lobby Group Including Chinese Companies Complain about Indian Accusations about Patent Fees

India’s enforcement agencies are misunderstanding how patent fees work according to a lobby group which includes Apple Inc. and Xiaomi Corp.  The lobby group, the India Cellular and Electronics Association (ICEA), has been increasingly concerned after tax raids on Xiaomi amid accusations of money laundering were launched by India’s enforcement authorities.  The ICEA sent a letter to ministries urging the government to intervene after the Indian agency accused Xiaomi of moving money out of the country by falsely claiming it was for patent fee payments.  The agency seized more than 700 million Dollars from a local unit of the Chinese smartphone maker in a move that has been put on hold pending a final court decision.  The lobby group said in the letter that such an action would have a chilling effect on future investment in the country.  Xiaomi, on its part, said that its patent fee payments were normal procedure and its statements to financial institutions were accurate.  The company said Indian authorities were assuming that royalty payments were a disguised way of sending money out of the country, and that they were being targeted as a Chinese company.  As well as Xiaomi, ICEA also includes Oppo Mobile Telecommunications Corp., Hon Hai Precision Industry Co., and Wistron Corp., all of whom are worried that enforcement agencies will open similar investigations on them.