Asian Patent Attorneys Association

By

Thomas Q.T. Tsai

The Recognized Group of Taiwan

Group Report

Patent Practice Patent and Trademark Applications

Year Patent Trademark

2002 61,402 61,729

2003 65,742 65,907

Increase/

Decrease

+7.06% +6.77%

IP Litigation before District Prosecutors’ Offices

Patent Practice (cont.)

Year New Cases

Dissolved Cases

Indicted Cases

The Average Days to Dissolve One Case

2002 5627 5704 2670 114.99

2003 6567 6545 2866 80.67

Increase/

Decrease

+940 +841 +190 -34.32

New IP Practices Newly Effective Patent Law

- Effective as of July 1, 2004 New Trademark Practices

- Registration of Sound Marks and 3D Marks

- Determination of the Likelihood of Confusion

- Effective as of July 1, 2004 2004 Copyright Law Amendment

- Effective as of September 3, 2003

Patent Law Amendment

Deadlines for Submitting Priority Documents Extended

“Involuntary Disclosure” as Exception to Novelty Bar

Deadline for Requesting a Re- examination Extended

Post-Grant Invalidation only

Patent Law Amendment (cont.)

Examining Cases Involving Infringement Litigation on a Priority Basis

Patent Annuity Reduction Formality Examination for Utility Model

Patent Applications Complete Decriminalization of Patent

Infringement Acts

New Trademark PracticesEffective as of July 1, 2004

Guidelines for Examination of Sound Marks

Guidelines for Examination of 3D Marks

Guidelines for Determining the Likelihood of Confusion

Guidelines for Examination of Sound Marks Sound Marks: commercial tunes, rhythms, human

voices, bells, ring tunes, or animal calls. Represented by musical score, numerical musical

score, or a written description, music notes, or literal description, along with a CD-ROM recording the sound.

Distinctiveness Requirement must be met. If the sound represent the quality, function, or

description of the goods/service, it is not distinctive. No registration for generic sound.

Guidelines for Examination of 3D Marks

3D Marks: consist of height, width, and length. Described by 3D drawing. Perspective drawings

or samples are optional. Distinctiveness Requirement must be met. 5 Types: shapes of goods; shapes of packaging;

3D logos; interior or exterior decoration of shop; combination of words, images, symbols, colors and 3D shapes.

3D marks must be distinctive and non-functional.

Guidelines for Determining the Likelihood of Confusion

Factors:1. The strength of the marks

2. The degree of similarity between the marks

3. The degree of similarity between the goods/services of the marks

4. The extend of the trade operation of the senior right owner

Guidelines for Determining the Likelihood of Confusion (cont.)

5. The actual Confusion

6. The degree of the consumer recognition of the marks

7. Whether the applicant of the junior mark is in good faith

8. Other factors, such as the channels of trade or the service types.

2004 Copyright Law Amendment- Effective as of September 3, 2004

Adding Anti-Circumvention Provision Eliminating the Distinction between “Int

ent for Profit” and “Not-Intent for Profit” for Criminal Penalty

Increasing the Penalties for Manufacturing and Selling Pirated CDs

2004 Copyright Law AmendmentEffective as of September 3, 2004

Clarifying Definition for Fair Use Suspending the Release of Alleged

Copyright Infringement Goods at the Custom

First Patent Compulsory License

Condition:1. non-profit seeking use in case of national

emergency or to improve the welfare of the Public, or

2. where the applicant is unable to reach a license agreement under a reasonable commercial condition for a certain period.

Limits:

Practice can only to supply the domestic market; in other words, export is not allowed.

Thank You for Your Attention

The Recognized Group of Taiwan