IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more

IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more

Changes for Patents and Trademarks in Taiwan – Interview With George J.H. Huang, Sandy Huang and Zoe Kwong – 10th Anniversary of IP Fridays – Meet Us in Atlanta – Episode 151 – IP Fridays

April 26, 2024

We are celebrating the 10th birthday of our podcast IP Fridays! Join us in Atlanta on Monday evening, the 20th May 2024 and meet us in person! Details will be posted on our website ipfridays.com and on social media!  We had started the podcast at the 2014 INTA Annual Meeting in Hongkong so we thought it would be a good idea to celebrate the 10th anniversary also during an INTA Annual Meeting!

In this episode of the IP Fridays podcast, we were joined by three experts from Wisdom International Patent and Law Office in Taiwan: founder George J.H. Huang, patent attorney Sandy Huang, and international affairs manager Zoe Kwong.

The discussion began with an overview of the latest guidelines for computer software patents in Taiwan, which now require that the software significantly utilizes hardware resources to be eligible for patent protection. This marks a departure from older guidelines and incorporates elements from Japanese regulations.

The experts also compared patent eligibility criteria between Taiwan and China, noting significant differences. In China, the focus is on using technical means to solve technical problems according to natural laws, which can often lead to challenges in proving the technical nature of inventions, particularly those that might be considered as business methods or mathematical rules.

Moving to trademarks, it was noted that Taiwan operates under a “first to file” system and does not require evidence of use at the time of application. This is particularly important for overseas applicants to understand, as early filing can prevent issues with trademark squatting. Taiwan does not participate in the Madrid Protocol, so international applicants must file directly in Taiwan.

Recent legislative updates were also covered, highlighting the new accelerated examination process for trademarks in Taiwan, which can significantly shorten the registration timeline. However, this process is best suited for clear-cut cases, as complex or disputed marks may still face lengthy examinations.

The episode concluded with a look at changes to the trademark agent system in Taiwan, which now requires agents to pass an exam and undergo annual training to ensure they maintain a high standard of professional knowledge.

Overall, the podcast provided a comprehensive look into the intellectual property landscape in Taiwan, offering key insights and strategic advice for navigating patent and trademark issues in the region.

Here is the full transcript:

We have three guests today on the IP Friday’s podcast from Wisdom International Patent and Law Office, a law firm located in Taiwan. They are Mr. George J.H. Huang, Ms. Sandy Huang, and Ms. Zoe Kwong.

George J.H. Huang is the founder of Wisdom International Patent and Law Office. Having over 27 years of experience in the intellectual property field, George is skilled at handling patent, trademark, and design matters, from drafting and prosecution to cancellation opposition and other contentious work. George has also been individually ranked and recognized as a recommended individual in the IAM Patent 1000, the WTR 1000, and the Asia IP Rankings. He is the author of two Japanese books, Taiwan Trademark Practice Guide and Taiwan Patent Practice Guide, which are highly praised by in-house counsels and critics.

Sandy Huang graduated from the National Taiwan University with a master’s degree in chemical engineering. She is a registered patent attorney and her practice focuses on patent drafting, prosecution, disputes, and invalidation in various countries, particularly in the areas of chemical engineering, mechanics, and semiconductors.

Sandy also has extensive experience in patent search, freedom to operate analysis, and patent portfolio management. And finally, Zoe Kwong is the firm’s international affairs manager. Welcome George, Sandy, and Zoey to the IP Friday’s podcast.

Thank you.

 Great, so let’s kick it off with our first question today.

Could you introduce to our listeners the current regulations on the eligibility of computer software patents in Taiwan?

Yes, sure. Our patent examination guidelines for computer software has been revised in 2021, and the criteria on determining eligibility, clarity, and invented staff was revised a lot. Regarding the eligibility, the old guidelines in Taiwan incorporated some regulations of EPO and USPTO, considering whether the invention is nothing more than the idea of doing that thing on a computer, which might be the old opinions of the USPTO before 2014, and whether there is further technical effect going beyond the normal physical interactions between the program and the computer.

But the new guideline in Taiwan is very different now. It introduced Japanese regulations and determined whether the information processing via computer software is realized through the utilization of hardware resources.

So under the current regulations in Taiwan, the most important part to comply with the eligibility requirements is to recite a substantial information processing in a claim, and state in a claim that the information processing is realized by the cooperation between computer software and hardware resources.

And what about China? Can you comment on that? Does Taiwan and China use the same language, and are there similar regulations?

Now, China’s regulation is quite different from Taiwan. China adopts a three-element test to determine whether the invention uses technical means to solve a technical problem and achieve the technical effects complying with the laws of nature. For example, if the invention itself solves a certain technical problem utilizing laws of nature, but not utilizing rules or methods set by human mental activities, and obtains technical effects other than effects produced by algorithm or business method itself, the invention meets the requirements of eligibility in China. But on the other hand, under current practice in China, whether the problem to be solved is technical is an important part. It is quite common that the patent examiner deems the problem to be solved is not technical. It is merely a business method or a math rule, and then directly considers the invention ineligible.

So in China, it would be very important to emphasize why the problem to be solved is technical in the specification.

Now, given that Taiwan and China have quite different regulations, what would be your suggestion for patent applicants if they wish to obtain patent rights in both Taiwan and China with one application? Can that be done?

Oh yeah, in my opinion. Though the regulations in Taiwan and China are quite different, the concepts are actually similar. They both focus on whether the claimed invention utilizes hardware to execute software in order to solve a technical problem. So I will suggest the applicants to fully illustrate application scenarios and the technical problems present in the scenarios when drafting the specification.

And applicants should also describe some examples in the specification to demonstrate how the algorithm is combined with various application scenarios and how to achieve technical effects after the combination. Then the technical means should also be emphasized in the claims. So the eligibility requirements in both of Taiwan and China may be fulfilled. And on the other hand, as we emphasize the technical means, technical problems and the technical effects a lot in the specification for the eligibility, it would also help a lot for the inventive step of the patent application in both of Taiwan and China.

Let me ask you a practical question. Do you ever run into situations where you’re able to get a patent registered in Taiwan but not in China? Does that ever happen where you only get it in one country?

So for our experience, we didn’t have that kind of experience since maybe the application might face some problems in China and they have to overcome more office actions in China. But yeah, maybe the claims obtained may be different from in Taiwan and China, but we can obtain the patent rights in both of China and all of Taiwan and China.

Okay. Let’s switch gears a little bit and talk about trademarks, which is very near and dear to my heart.

Are there any points to note for overseas applicants who would like to get a trademark registered in Taiwan?

I think the very first thing would be Taiwan adopts a versatile file system, which is different from US. That trademark rights go to versatile use. We recommend that applicants should file a trademark application in Taiwan as soon as they decide on the brand strategy. Also, Taiwan is not a party to the Madrid protocol. However, applicants may claim rights of priority based on an earlier application filed in one of the WTO member status within six months.

The second point to note would be trademark watching is quite important to foreign brand owners. Us applicants are not required to submit evidence of trademark use at a time of filing applications.

It is possible that a third party register, a trademark that is identical or similar to yours. What’s more, it becomes more difficult to invalidate the trademark if the trademark registration is older than five years. Similar to many countries, there are three ways to remove the trademark registration at the Taiwan IP office, which are opposition, invalidation and the cancellation. The opposition period is three months after a trademark is registered.

A request for invalidation filed within five years may rely on any grounds.

And for non-use cancellation, it is possible to cancel a trademark that has not been used for three years.

One of the biggest challenges is that brand owners sometimes discover the layer trademark were registered by squatters after five years. In that case, the brand owner must prove that the disputed mark was obtained in bad faith and the earlier trademark is a well-known trademark.

Therefore, trademark watching would be helpful to brand owners to stay ahead of potential infringement.

Yes, that is a very important point about trademark watching. I assume George, you do that for your clients. You regularly review trademark watch notices at your firm.

Yes. Yeah. Now let me ask you a question about what we call the well-known trademark status. How does one actually obtain a well-known trademark status in Taiwan? And why is it important?

I think first of all, there is no official well-known mark registry in Taiwan. If the trademark holder has not successfully proved their trademark is famous in Taiwan in previous proceedings, they will need to provide the evidence of use. From our past experience, we noticed that trademark owners have a difficult time improving their traumas are well-known in Taiwan.

All they do not know what should be provided to the Taiwan IP office. The owner should provide sufficient and objective evidence to prove that the trademark has widespread reputation in Taiwan and has been generally recognized by relevant enterprises or consumers.

Usually the Taiwan IP office would accept the invoices with time stamp and the trademark advertisements and the amount spent on advertisements and the promotions import and export the decorations. The product itself and et cetera.

The key lies in the lens of time of the trademark being used in Taiwan and the amount of money spent on promotions, especially the lens of time is the most important.

For example, we assist a food product brand to prove their unregistered trademark is famous by submitting evidence that they have been selling in Taiwan supermarkets for a few years and the participator in food export every year. At the end, we succeeded with successfully

canceled the third party marks but for a brand, for a newer brand. The brand owner will need to submit stronger evidence to prove the large volume of the advertisement. So late the trademark has reached the level of being famous in such a short period of time. Thank you.

 Very interesting, George. Thank you very much for that information.

Let’s talk about some of the recent changes in the law. Are there any new updates on Taiwan trademark laws and regulations that our listeners should know about?

Yes, in fact, the Taiwan legislature just passed the amendments of the trademark act in May, 2023. So there are four major changes. The first is the introduction of accelerated examination for trademark applications. The second is the trademark agent management system. The third is the addition of conditions of when nominated fair use is considered non-inversion. And the fourth is simplifying customs detention process. So now trademark holder can determine whether there’s infringement based on the photos on the customs new online platform.

Another updates would be starting from January, the IPO provides an option of electronic trademark and patent certificates. So now applicants may now opt for electronic certificates in Taiwan.

Interesting. And what, tell me more about the newly introduced trademark accelerated examination. Is there anything that applicants need to do? What’s the process exactly?

Oh, yes. So currently in Taiwan, it takes around eight months for the IB office to issue a first action. We actually have a fast track examination system in place starting from 2020. Although it’s free of charge and you need to fulfill certain documentary requirements. The examinations do take around five to six months with the fast track system. So it’s actually quite long. The new accelerated examination could effectively shorten the examination period to two months.

In the new system, the applicant will need to pay an acceleration fee of 6,000 Taiwanese dollars, which is approximately 200 US dollars and submit reasons and evidence to prove that the applicant has urgent needs to obtain trademark rights. So if a company wishes to register the trademark ASAP, we highly recommend going for the accelerated examination. For example, the owner already discovered in printments in Taiwan, the owner is negotiating a licensing agreement, all the products will be launched in Taiwan very soon.

However, it’s not always recommended to opt for accelerated examination. For example, if the descriptions of goods and services are too broad or unclear, the trademark applied for is a non-traditional trademark like a 3D trademark or color trademark, or the trademark is already in dispute.

In such cases, the IPO would issue a notification after the applicant to respond. The application process would then take longer and the benefits from reduced examination period will be wasted. So the applicants may think of the pros and cons of applying for the accelerated examination in Taiwan.

Very interesting to know about that new system. And I’m sure that will be helpful for many applicants who are trying to get their registrations issued quicker in Taiwan. So we’re gonna have our last question today. I were nearing the end of today’s podcast and that relates to the issue of being a trademark agent. Many foreign applicants do not realize that currently any person can be a trademark agent. What are the key differences in the new system?

So in fact, the IPO now has no restrictions on individuals whom I practice before the IPO on trademark matters. At present, any individual with a local domicile address can represent trademark applicant resulting in accurate submissions. So this is very bad for an applicant and applicants too. The new acts finally introduces a trademark agent management system to ensure trademark practitioners who are equipped with professional knowledge of trademark shall apply for registration before the IB office. Under the new system, the trademark agent must have passed a trademark agent exam organized by the government and attend training sessions every year. The new system is expected to protect the interests of trademark applicants and right holders best.

Very good. Well, I wanna thank you George, Sandy and Zoe for spending time with us today on the IP Friday podcast. Very interesting indeed. And thank you once again. Thank you.

Thank you. Thank you very much.

Find out more about Wisdom International Patent & Law Office here