Recent TIPO News Regarding Patents

01 June 2017

In March 2017, the Taiwan Intellectual Property Office (TIPO) announced in several news releases about the updates covering the Taiwan- US memorandum of understanding, an initiative on interview improvement and a new edition of the examination quality assurance program. A summary of each release is as follows.

Taiwan and the US signing MOU to Reinforce Cooperation on IP Enforcement

Given the swift development of emerging internet technology, IPR-related offences have become transterritorial in nature, and have posed as a challenge in the enforcement of IP rights for an individual country. In February 2017, Taiwan and the US signed an MOU in Washington intending to allow the judicial prosecution, criminal investigation, police department and customs service units in Taiwan and the US to share experiences, skills, and information regarding IPR law violations and trade-related fraud, and to coordinate in investigations and enforcement against such offences. The complete copy of the MOU can be found at https://www.tipo.gov.tw/public/Attachment/73221472387.pdf.

New Interview Improvement Measures to be Implemented as a Pilot Program

TIPO has launched a short-term pilot programme effective from April to June 2017 with respect to new interview procedures for patent prosecution matters and patent invalidation actions. The new procedures mainly require the petitioner to prepare a Request Form summarizing issues to be discussed in the interview as petitioned and stating the necessity of the interview. Upon granting the petition for interview, TIPO will notify the petitioner and party/parties involved by a notification identifying the version of claims and specifications under examination and the issues to be discussed in the scheduled interview, in hope for enhancement of better communication between the examiners and the interview attendees. Attendees may bring electronic devices to the interview to take notes on the formatted Interview Summary Form.

Feedback and public comment on this short-term pilot program will be collected and served as a reference to TIPO in formulating Oral Hearing proceedings that may be implemented to inter parte invalidation proceedings in the future.

Patent Examination Quality Assurance 2.0

Since TIPO has reduced the pendency from entry of examination to allowance down to less than 20 months, it has adjusted focus to improving examination quality by establishing a patent examination quality assurance task force aimed at studying the work product review measures concurrently adopted by various patent jurisdictions. Based on the studies, the task force shall subsequently formulate the Operational Directions for Patent Examination Quality Assurance that is reliably tailored to the TIPO’s implementation. In the meantime, TIPO will continue to hold training sessions to ensure consistent examination standards are in practice.

Grace Period Provisions in Patent Act and Examination Guidelines Amended

According to the revised Patent Act, which comes into force on May 1, 2017, the term of grace period for exceptionally excluding novelty or inventiveness loss due to disclosure is to be extended from six months to twelve months for invention and utility model patent applications and to remain at six months for design patent applications. The corresponding amended paragraphs in the Guidelines for Patent Examination are also effective on May 1, 2017.

The author acknowledges and appreciates the contribution and research efforts given by Kevin CW Feng, a patent associate at Tsai, Lee & Chen

About the author

Crystal J. Chen

Crystal J. Chen is a partner at Tsai, Lee & Chen. In her more than 20 years of practice she has covered all areas of IP law, including trademark prosecution and litigation, advising on patent law and enforcement, anti-counterfeiting and infringement actions, as well as trade dress protection under the Fair Trade Act. She is also knowledgeable in law practices of China and frequently handles contentious matters. Chen’s global clientele includes Global 500 companies in the fashion and luxury industries. Strategic thinking and smooth communication is her merits that often win clients’ trust.

Chen is a member of the design committee and nominating committee of the International Association for the Protection of Intellectual Property (AIPPI). She was the chair of delegates for independent members and the delegate of Taiwan independent members of AIPPI. In addition to actively participating in committees of AIPPI, from time to time she has been in the leadership team for study questions on topics relating to designs and litigation for the formation of AIPPI resolutions.

Chen is also a member of the American Intellectual Property Law Association, the American Bar Association, the Beijing Bar Association and the International Trademark Association. She has received recognition and honours from various professional media.

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