Meet the Presenters Ann McCrackin Daisy Wang President | Black Hills IP Senior Counselor | Lee & Li amccrackin@blackhillsip.com daisywang@leeandli.com
Market Comparisons & Considerations Country United States China Japan South Korea Canada Mexico Taiwan Population 326 Mil 1.38 Bil 126 Mil 51.2 Mil 35.9 Mil 126 Mil 23.5 Mil Economy #1 (GDP) #2 #3 #12 #10 #15 #22 GDP per $57,500 8,100 39,000 27,500 43,200 8,200 24,200 Capita Agriculture: 1% Agriculture: 9% Agriculture: 1% Agriculture: 2% Agriculture: 2% Agriculture: 4% Agriculture: 2% GDP by Industry: 19% Industry: 40% Industry: 30% Industry: 39% Industry: 28% Industry: 32% Industry: 36% Sector Services: 80% Services: 51% Services: 69% Services: 59% Services: 70% Services: 64% Services: 62%
Top 10 Taiwan Technologies (# of 2016 Patent Grants) 9% Semiconductor Devices 5% Electric digital data processing 2% Pictorial Communication Optical Elements, Systems, Or apparatus 1.3% Printed Circuits; Casings or constructional detials of electric 1.1% apparatus Transmission of Digital Information 1.1% LCD, EPD 1.1% Static Stores 1.1% Preparation for medical, dental, or toilet purposes 1.1% Photomechanical Production of textured or patterned 1.1% surfaces
Top Patent Assignees (by 2016 Grants) 900 800 700 600 500 400 300 200 100 0
Patent Filing (Non-Resident) 140,000 133,612 133,522 127,042 China 120,200 120,000 117,464 100,000 80,000 Japan 59,882 60,030 58,137 60,000 56,705 55,783 Korea 46,219 46,419 45,406 40,779 40,000 28,240 27,584 27,391 27,153 Taiwan 26,970 26,828 26,304 24,713 24,705 24,637 Canada 20,000 16,707 16,103 14,020 14,234 14,889 Mexico 0 2012 2013 2014 2015 2016
Patent Grants (Non-Resident) 120,000 China 102,072 100,000 95,880 80,000 73,297 70,548 64,153 60,000 51,508 49,874 49,392 Japan 42,444 42,609 40,000 Taiwan 32,492 29,406 27,769 26,914 26,475 Korea 24,340 21,077 25,554 23,129 19,415 20,000 20,765 20,717 19,343 Canada 13,395 12,068 10,056 9,514 8,928 8,229 Mexico 0 2012 2013 2014 2015 2016
Patents in Force 2,500,000 2,000,000 China 1,946,568 1,920,490 1,838,177 1,772,203 1,694,435 Japan 1,472,374 1,500,000 1,196,497 1,033,908 Korea 1,000,000 875,385 950,526 912,442 885,959 812,595 738,312 500,000 Canada 175,236 161,442 153,781 166,771 144,363 Mexico 106,340 106,648 109,238 96,962 101,645 0 2012 2013 2014 2015 2016
Lifetime Cost of a Patent $30,000 $25,000 $20,000 $11,373 $16,154 $15,999 $15,000 $2,561 $10,187 $9,893 $10,000 $14,163 $12,567 $10,267 $5,000 $9,804 $8,056 $7,414 $0 China Japan Korea Canada Mexico Taiwan Patent Acquisition Annuities
Patent Practice of Republic of China (Taiwan) Daisy Wang March 2018 關懷．服務．卓越 we care ． we serve ． we excel
INDEX I. I. Statist stics cs II. II. Unique Features s of Patent Pract ctice ce in Taiwan – Gener General al III. III. Subject ct Matters s for Patent Protect ction IV. Subst IV stantive ve Exa xamination of Inve vention Patent Applica cations V. V. Exa xamination of an Inve vention Patent Applica cation VI VI. Strategic c Fact ctors s for Patent Filing and Patent Prose secu cution VI VII. Enforce cement of Patent Right 12 12
I. ROC Patent Statist stics cs - 2017 2017 Source: TIPO Statistics Report 13 13
II. Unique Features s of Patent Pract ctice ce in Taiwan – Ge Genera ral 14 14
II. Unique Features s of Patent Pract ctice ce in Taiwan – General ( Ge (1) 1. Taiwan is not a member of PCT – Only national filing is allowed 2. Taiwan is not a member of Paris Convention – International priority claim can be made based on reciprocity principle (All WTO members are reciprocal countries) 3. Three Kinds of Patents – Invention, Utility Model and Design Patents (Utility Model patent applications are subject to “formality examination”) 15 15
II. Unique Features s of Patent Pract ctice ce in Taiwan – Ge General ( (2) 4. Absolute Novelty Requirement (with 12 month grace period for invention and utility model patent applications and 6-month grace period for design patent applications). There is NO limitation to the categories of prior public disclosure eligible for grace period; laying open patent publication or patent grant publication does NOT qualify as an event to claim grace period. 5. First-to-File Principle 6. Quality of Chinese Patent Translation 16 16
III. Subject ct Matters s for Patent Protect ction 17 17
III. Subject ct Matters s for Patent Protect ction (1) A. Invention Patent Applications 1. Objects, process and method inventions. 2. Software-related inventions, business method inventions and computer readable storage medium inventions. 3. compound inventions, composition inventions, use inventions, secondary use inventions and process inventions. 18 18
III. Subject ct Matters s for Patent Protect ction (2) B. Utility Model Patent Applications 1. A creation or an improvement made in respect of the form, construction or installation of an object. 2. Only object and device inventions 3. Conversion between an Invention patent application and a utility model patent application 4. Two-Tier Filing & Selection of One Patent Case 19 19
III. Subject ct Matters s for Patent Protect ction (3) C. Design Patent Applications 1. Shape, pattern, color or any of the combination, which is applied to an article. 2. Since 2013, computer generated icon (Icon) designs and graphic user interface designs (GUI) applied to articles are patentable. 20 20
IV. Subst stantive ve Exa xamination of Inve vention Patent Applica cations s 21 21
IV. Subst stantive ve Exa xamination of Inve vention Patent Applica cations s (1) 1. First examination stage & Reexamination stage (by different examiners) 2. Request for substantive examination needs to be filed within 3 years from the Taiwan filing date by any person. 3. Patent division can be made before the parent patent application is decided. Post-allowance division is allowed only the allowance is made at first examination stage. 22 22
IV. Subst stantive ve Exa xamination of Inve vention Patent Applica cations s (2) 4. Amendment can be made (1) prior to issuance of any office action, or (2) when filing a response to an office action. 5. Post-grant can be made with specific restrictions (not allowed to enlarge the claim scope). 6. Correction of translation errors (if vital) may lead to a change of the filing date and loss of priority claim. 23 23
V. Exa xamination of an Inve vention Patent Applica cation 24 24
V. Exa xamination of an Inve vention Patent Applica cation (1) 1. Normal Examination Track (Examination & Reexamination) 2. PPH (Patent Prosecution Highway) (1) No office action is issued for Taiwan patent application (2) Priority application’s gets to allowable stage (3) Claims of priority application are same as those for Taiwan application (4) PPH cooperation with US, Japan, Korea, Portland, Canada and Spain. 25 25
V. Exa xamination of an Inve vention Patent Applica cation (2) 3. AEP (Accelerated Examination Practice) (1) AEP can be requested based on any of the 4 grounds – A. Allowance of any corresponding foreign patent case(s) B. Prosecution progress for corresponding patent case(s) filed with USPTO, EPO or JPO C. Commercial need D. Green-tech invention is claimed (2) Request for AEP can be filed any time (not just before issuance of 1 st office action) 26 26
V. Exa xamination of an Inve vention Patent Applica cation (3) 4. Statistics Nature of Requesting Average Time Average Time for Remarks Examination Ground Needed for Receiving Concluding TIPO’s 1 st Response Examination Normal 9 months 16 months for Data source : IPO’s Exam concluding news release (Feb 5, Track examination 2018) PPH 46.1 days 113.7 days For 1-2, 2018 53.9 days 130.4 days For 2017 Ground A 50.1 days For 1-2, 2018 Ground B 15.7 days AEP Ground C 98.5 days Ground D 57.9 days Ground A 71.1 days For 2017 Ground B 79.4 days Ground C 129.7 days Ground D 97.2 days Average Allowance Rate – Normal Track – around 70% PPH & AEP – above 90% 27 27
VI. Strategic c Fact ctors s for Patent Filing and Patent Prose secu cution 28 28
VI. Strategic c Fact ctors s for Patent Filing and Patent Prose secu cution 1. Ensure Patent Translation Quality? 2. Ensure Cost Efficiency & Patent Quality – Greater China Patent Filing and Prosecution Coordination 29 29
VII. Enforce cement of Patent Right – Ove verall 30 30
VII. Enforce cement of Patent Right – Ove verall 1. Jurisdiction Court – IP Court or Ordinary Court 2. Civil Liability – Damage Claim & Preliminary Injunction Order 3. Statutory Limitation – 2 Year from Knowledge or 10 Years from Infringement Act, whichever is earlier 4. Provisional Attachment Order & Preliminary Injunction Order 5. Evidence Preservation Order (Trade Secret Protection) 6. Patent Validity Challenge – By Court and IPO 31 31
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