NEWSLETTERRanging from Innovations to Intellectual Property

CONSULTANTSApplying Intelligence to IP - Globally

Mar - Apr’2013Vol. 8,

Contents

1. Headlines 1

2. News India 2

3. News China 6

4. News Japan 10

5. Editorial 13

NEWSLETTER

TT Consultants is an ISO-27001 and ISO-9001:2008 certified Intellectual Property

Consulting firm providing services to more than 500 Companies, universities and research

institutes. With clients in more than 20 countries worldwide including US, Europe, Canada,

Japan, Singapore, South Korea, Taiwan, India etc., we strive to deliver foremost patent

prosecution and litigation support. Innovation, knowledge and transparency, form the

fundamental steps to our company’s vision and mission.

© TT Consultants, 2013. All rights reserved – privileged and confidential

© TT Consultants, 2013. All rights reserved – privileged and confidential

HEADLINES INDIA • File Foreign Application Prosecution History with Indian Patent Office

• India Plans Price Controls for Patented Drugs

• Indian Technology Companies Sharpen Focus on Patents

• India Ranks 12 in Global Innovation Index; Germany, Japan in Lead

• Indian Generics in Need of Policy Tonic

• India Emerging One of World's Best Legal Process Outsourcing Centres

• Sun Pharma gets FDA Nod for Cancer Drug

• Imports of Pharma Drug Ingredients See 93% Increase

HEADLINES CHINA

• China Releases Intellectual Property Plan for Strategic Emerging Industries

• China, South Korea Lead BRICK Nations in Patent Filings – Study

• China Patent Inquiry System Launches English Interface

• Adept Technology Receives $1.1 Million Order from Major China Civil Explosive

Technology and Equipment Turn Key Service Provider

• CTMO to Accept Trademark Applications for Retail or Wholesale Services for

Pharmaceutical, Veterinary and Sanitary Preparations and Medical Supplies

• Proposed Changes to the Chinese Trademark Law

• Designed in America, Made in China: Protecting Intellectual Property from Cyber

Espionage

HEADLINES JAPAN

• Samsung Loses Japanese Suit against Apple

• Philips to Sell Lifestyle Entertainment Biz to Japan's Funai

• Appcelerator Japanese Mobile Community Comes Out in Force for tiTokyo

• WIPO Director General Welcomes Increase in Japan’s Voluntary Contributions to WIPO

• Protecting Rights as a Means to Enhance Development

EDITORIAL

• How to Register a Trademark in Taiwan

INDIA

CHINA

JAPAN

EDITORIAL

Page 2 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

File Foreign Application Prosecution History with Indian Patent Office

During the prosecution of the Indian patent, one provision (Section 8), which has attained importance is the requirement of filing information about foreign patent applications in relation to the same or substantially the same invention. Noncompliance of this provision is a ground for pre-grant opposition, post-grant opposition and revocation of a patent, irrespective of the fact that the invention is novel, non-obvious and useful. The courts and tribunals in the recent past in India have revoked the patents for non-compliance with Section 8. This article analyzes the relevant statutory provisions and the learning from recent decisions. What is the Section 8 Requirement? Section 8 of the Indian Patents Act, 1970 comprises of two mandatory requirements: voluntary filing of information (Section 8 (1)) and filing of information upon request by the Controller (Section 8(2)) in relation to patent applications filed outside India for the same or substantially the same invention…..

Read More>> Go to the top>>

India Plans Price Controls for Patented Drugs

An Indian government panel Wednesday published a set of proposals to control the prices of patented drugs, a plan which has drawn fire from the pharmaceutical industry. If implemented, the proposals could lead to multinational drug companies being forced to sell some medicines at a third of their current prices. The inter-ministerial committee has also recommended the setting up of a panel to negotiate the prices of patented products for government procurement in India. It recommended that the pricing formula take into account the per-capita income of Indians, and that the prices paid by governments in the U.K., Canada, France, Australia and New Zealand be used for reference because these countries' bargaining power allows them to negotiate better. "It is clear, when we take the per capita gross national income [with purchasing power parity] into account, drug prices are on the higher side in India compared to most of the countries under reference," the committee said in its report.

Read More>> Go to the top>>

NEWS INDIA

Patent Support Services

At TTC, we provide patent litigation support,

patent prosecution support, licensing

support, patent acquisition support, technology transfer consulting, patent

portfolio management and other legal support

services to leading patent law firms,

companies, universities, research institutes and intellectual property

owners.

Page 3 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

Indian Technology Companies Sharpen Focus on Patents

India’s software exporters are trying to transform themselves from extravagantly staffed body shops doing grunt work by stepping up their intellectual property (IP) efforts as well as taking advantage of the opportunities that trends and technologies such as social media, mobiles and cloud computing offer. By trying to generate more revenue from so-called non-linear, or non-headcount-related businesses, these companies are trying to shield themselves from the risks that these technologies present to traditional off-shoring and delivery models. Among the effects of this trend is a concerted effort to file for patents, with IT companies trying to earn more with fewer employees as cloud computing alters the future of traditional information technology (IT) outsourcing with a pay-per-use or subscription model. Other initiatives include automation, templates for industry segments that can be re-used with minimal customization, re-use of assets and codes, platform solutions and tools such as Six Sigma, besides value-added services such as analytics and IP.

Read More>> Go to the top>> India Ranks 12 in Global Innovation Index; Germany, Japan in Lead

The overall environment in India is perceived as being conducive for innovation by business executives from 25 countries across the world, a report said. According to the GE’s annual Global Innovation Barometer report, 55 percent of business executives from the 25 markets regard the Indian environment for innovation as strongly ‘innovation conducive’. This puts the country in the 12th position of the country ranking based on this indicator. The perception is even higher among Indian executives as 58 percent of Indian business executives report that their country has a strongly innovation conducive environment overall. According to the report, policy environments in Germany, US and Japan perceived as most innovation conducive by their peers. An overwhelming 85 percent of respondents believe that understanding the customers and anticipating market evolution is the key to innovating successfully in India.

Read More>> Go to the top>>

NEWS INDIA

Patent Invalidation Search

We ‘scour the earth’ when it comes to

searching for prior art in order to invalidate a

troublesome patent. We have helped

several US and Asian companies save huge

litigation costs by uncovering highly

useful prior arts. We have Mandarin,

Japanese and Korea native searching

capability. We are a preferred choice for

companies involved in complex patent

litigation and have represented many Joint

Defense Groups (JDGs) in such cases to identify relevant prior

art for invalidating potentially dangerous

patents.

Page 4 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

Indian Generics in Need of Policy Tonic

Indian drug companies are doing well because of the momentum of the last 50 years. But from 2015, they will face difficulties. YUSUF K. HAMIED, CHAIRMAN, CIPLA Multinationals approach healthcare as a business. When you are dealing with human lives, you need to have a humanitarian approach. “If I win a case and the product is off patent, anyone can market it.” “My life has not been the same from February 2001,” says Cipla Chairman Yusuf K. Hamied, recounting the days leading up to a dramatic event that put India, indelibly, on the global healthcare map. The home-spun drug company had just taken the battle on drug prices right into the backyard of multinational drug-majors, by slashing its price on a cocktail of HIV/AIDS drugs sold in Africa. Cipla offered the triple-drug combination, Triomune, at less than $1 a day, about $350 annually. And this had taken the wind out of the multinational campaign, whose price for the combined three-drug therapy was about $12,000 per year.

Read More>> Go to the top>> India Emerging One of World's Best Legal Process Outsourcing Centres

Legal services in India have steadily grown in the last five years and the country has become one of the best Legal Process Outsourcing (LPO) destinations in the world, the government's annual economic report card says. The Economic Survey 2012-13 that Finance Minister P Chidambaram presented in parliament showed legal services had grown at 8.2 percent annually from 2005-06 to 2011-12. The Indian legal profession consists of nearly 1.2 million registered advocates and there are about 950 Law schools. Every year approximately 60,000 to 70,000 law graduates join the legal profession. India ranked 45 with a score of 4.5 in terms of judicial independence in the Global Competitiveness Report 2012-13. This is an improvement from 2011-12 when it was ranked 51. As regards efficiency in the legal framework in settling disputes, India has moved from 64th position in 2011-12 to 59th in 2012-13.

Read More>> Go to the top>>

NEWS INDIA

Patentability Search

A thorough patentability assessment search conducted on an

exhaustive list of patent and non-patent

databases. We offer innovative search

reports that come along with a key feature chart

and many value additions offered by

none other in the industry. This service is being extensively used by the best research

institute of Asia, several national universities of

Taiwan, top law firms in the US and 5 fortune

500 companies to name a few.

Page 5 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

Sun Pharma gets FDA Nod for Cancer Drug

Product is first generic version of Doxil, which was approved in 1995 to treat ovarian cancer.

Mumbai-based Sun Pharmaceutical Industries has received approval from the US food and drug administration (USFDA) to sell generic version of Doxil, a scarce anti-cancer drug. Doxil’s chemical name doxorubicin hydrochloride liposome injection is currently on the USFDA’s drug shortage list. This medicine approval is expected to further boost export earnings of Sun Pharma, which has significant presence in the US. United States is the world’s largest drug market. Doxorubicin HCl liposome injection is used to treat patients with ovarian cancer that has progressed or recurred after platinum-based chemotherapy. For products on the shortage list, the FDA’s office of generic drugs is using a priority review system to expedite the review of generic applications to help alleviate shortages. “This generic Doxorubicin HCl Liposome injection USP, 2 mg/mL is therapeutically equivalent to Doxil Liposome injection, 2 mg/mL of Janssen Research and Development,” said a company statement.

Read More>> Go to the top>> Imports of Pharma Drug Ingredients See 93% Increase

Indian pharma firms nearly doubled imports of drug ingredients last year. Companies said this was to make up for shortages in local production, while analysts said it may have been aimed at cutting costs ahead of proposed curbs on drug prices, especially as a chunk of the imports came from China. India imported active pharma ingredients (APIs) and drug intermediates worth $4.6 billion (about Rs.25,000 crore) in 2012, up from $2.9 billion in the previous year, according to data available with customs at various ports. A break-up of country-wise imports isn’t available at present. While the exact value of the imports is yet to be compiled by the Directorate General of Foreign Trade, industry experts say the figure could be higher as some consignments have been designated as general chemicals. “In the last couple of years, the local industry’s priority is to achieve maximum operational efficiency to mitigate the financial impacts of the new policy regime,” said an industry consultant who didn’t want to be identified. “In the pharmaceutical industry, material cost is 30-35% of sales and any savings on this will make a big difference in profitability.”

Read More>> Go to the top>>

NEWS INDIA

Structure & Sequence Search

When you request a chemical

structure/substructure search, our domain

specific searchers with extensive experience

perform patent searches and deliver insightful

results for compounds matching the query

structure, as well as for compounds containing the query structure as a

subset (substructure) of a larger structure.

Page 6 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

China Releases Intellectual Property Plan for Strategic Emerging Industries

China’s State Intellectual Property Office officially released the “2013 Intellectual Property Work Plan for Strategic Emerging Industries (hereinafter referred to as the ‘Plan’)” on February 18, which has been jointly prepared by 10 departments, including the National Development and Reform Commission, the Ministry of Education, and the Ministry of Science and Technology. The Plan has specified 50 measures for the country’s intellectual property development in the following eight areas:

Strengthening intellectual property analysis and appraisal capacity

Improving intellectual property management capabilities

Promoting intellectual property creation layout

Strengthening intellectual property transformation and utilization capacity

Enhancing intellectual property service capabilities

Strengthening intellectual property information platform construction

Optimizing the intellectual property development environment

Strengthening foreign-related intellectual property work

Read More>> Go to the top>>

China, South Korea Lead BRICK Nations in Patent Filings – Study

China and South Korea by far outpace other rapidly developing "BRICK" nations in new invention patent applications, according to a study focusing on innovation in several emerging economies. The study, released Wednesday by the Intellectual Property & Science business of Thomson Reuters, looked at research growth in Brazil, Russia, India, China and South Korea, defined as the BRICK countries. In previous years, the study focused on the group of nations commonly referred to as BRIC, but this year's report included South Korea. In addition to new invention patent filings, the study examined other measures of innovation, such as investment in research and development and the output of research publications. The patent findings focused only on invention patents, which do not include other types such as design patents. Between 2006 and 2010, these patent filings have increased by nearly 15 percent globally, the study said. In 2010, "mature" countries like the United States and European nations accounted for 60 percent of the total filings, according to the report.

Read More>> Go to the top>>

NEWS CHINA

Freedom to Operate Search

We provide a proactive patent

study for mitigating the risks involved before entering a

new jurisdiction and have the capability to

search in various geographies

including most of the Asian countries and

some European countries. Our experienced professionals

perform an in-depth search and very

closely examine the prior art vis-à-vis the

product features. Claim charts are

prepared based upon the national patent

laws.

Page 7 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

China Patent Inquiry System Launches English Interface

The System is a Chinese patent registration and file history search system created by the State Intellectual Property Office (SIPO) of China to meet the inquiry demand from applicants, patent right owners, patent agencies and the general public. The System has been put in use since April 27, 2012, when the site is only available in Chinese. On November 29, 2012, SIPO has officially launched the English interface of the System. The English interface can be accessed at http://cpquery.sipo.gov.cn/index_en.jsp?language=en_US. The System has two available log-in portals:

• E-Filing Registered User Inquiry (registered user) - User needs a registered username and password to access this version of the System. This version of the System will help the users registered for electronic applications to access all the information filed under its account.

• Public Inquiry (general user) - This version of the System is available for public use, but the user must first agree to the terms of a declarative legal statement before entering the site.

Read More>> Go to the top>>

Adept Technology Receives $1.1 Million Order from Major China Civil Explosive Technology and Equipment Turn Key Service Provider

Adept Technology, Inc. (Nasdaq:ADEP), a leading provider of intelligent robots and autonomous mobile solutions and services, today announced that Shenzhen King Explorer Science & Technology Co., Ltd., the largest China Civil Explosive Turn Key Service Provider, plans to upgrade more than 100 customer emulsion explosive lines they have built worldwide with fully automated packaging lines by using multiple Adept Quattro s650 parallel robots in the next three years. Each line requires either two or four Quattro s650 parallel robots depending on its throughput. The $1.1M order is expected to be fulfilled over the course of the 2013 calendar year. "By utilizing Adept Quattro robots and vision-guided conveyor tracking the company's automated packaging lines will improve traceability of explosive material by using sensors at each step in the process," said Rob Cain, president and CEO of Adept Technology. "With this type of system the Adept Quattro robots can track the number of units in each package virtually guaranteeing traceability and removing the potential for human operator error."

Read More>> Go to the top>>

NEWS CHINA

Patent Drafting & Illustrations

A well drafted patent is the key to a strong

patent and holds the highest chances of being

accepted by the National Patent Office. Our experienced and

technically trained professionals do a

comprehensive understanding of the

subject matter and use their exceptional

communication skills to elucidate the invention

and the draft is by default reviewed by an Indian Patent Attorney.

Further, the draft is reviewed by respective filing country Patent

Attorney. We have Illustrators

who are well conversant with the rules of

USPTO, PCT and other National Patent

Offices.

Page 8 of 15

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CTMO to Accept Trademark Applications for Retail or Wholesale Services for Pharmaceutical, Veterinary and Sanitary Preparations and Medical Supplies

The tenth edition of the “Nice Classification”, which takes effect as of 1 January 2013, adds, among other things, “retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies” (hereinafter the “Newly-added Services”) in Class 35. The CTMO, in response to these changes, announces to add those Newly-added Services indications as a separate group of services under Class 35 of the “Classification of Similar Goods and Services for Registration of Marks in the People’s Republic of China” and to begin to accept trademark registration applications for the Newly-added Services from 1 January 2013. 1. Definition of Newly-added Services The Newly-added Services are defined by the CTMO as “the retail (wholesale) services of bringing together, for the benefit of others, of a variety of goods (excluding the transport itself), enabling customers to conveniently view and purchase those goods provided by retailers (wholesalers)”. Such services are a combination of services provided for the purpose of encouraging customers to purchase the said goods, including services of providing goods, displaying goods,…..

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Proposed Changes to the Chinese Trademark Law

Recognizing the economic importance of a well-functioning trademark system and in view of recent high-profile trademark disputes, such as the widely publicized iPad dispute which was reputedly settled for a payment of about US$60million, the Chinese government has been considering a further revision of the Trademark Law which has been open for public consultation through January. The draft amendment addresses some important issues for applicants. It seeks to make trademark registration faster and more convenient, increases punishments for infringement, includes additional provisions to prevent unfair competition, and extends protection to additional types of non-traditional marks. A common complaint from foreign and domestic parties is that Chinese law does not provide adequate remedies for intellectual property infringement. The new draft law would raise the ceiling for fines imposed on trademark violators in circumstances where the financial losses and gains from the infringement cannot be determined. Read More>> Go to the top>> Read more on the third revision of China’s Trademark Law>> Read more on Latest law revision voices support for 'sonic trademarks' >>

NEWS CHINA

Claim Chart Preparation

This search helps in identifying the

potential infringers of a particular patent

portfolio. Over the years, we have evolved

an innovative and effective strategy to identify infringing

products/standards and ascertaining the infringement. This service is used by a

leading semiconductor manufacturer and some fortune 500

companies across the globe.

Page 9 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

Designed in America, Made in China: Protecting Intellectual Property from Cyber Espionage

In 2010 the U.S. Department of Defense spent $79.1 billion on research, development, testing, and evaluation of state of the art weapon systems to protect U.S. interests at home and abroad. Accompanying this steep price tag is an expectation that the Pentagon’s intellectual property is secured to Pentagon standards. Yet in the era of cyber warfare such assumptions have become worthless. Foreign hackers, particularly from China, have become increasingly adept in their ability to crack into American computer systems and access our most heavily guarded and classified intellectual property. FBI director Robert Mueller III admonished that cyber attacks would soon replace terrorism as the agency’s primary concern. Most troubling is that neither the federal government, the Pentagon, nor private enterprises are immune. At a congressional hearing on cyber security this past April, Rep. Michael McCaul (R-Texas) lamented, “When I look at the theft of intellectual property to the tune of $1 trillion, that’s a serious economic issue for the United States.” McCaul, who is chairman of the House Homeland Security Subcommittee on Oversight, Investigation, and Management, made this statement in reference to the theft of blueprints for the F-35 Joint Striker Fighters and the F-22 combat aircraft, which were stolen by Chinese hackers in 2009. These are two of the most advanced and expensive stealth aircrafts in the world, but somehow cyber militants were able to obtain their plans from the depths of our most secretive dwellings with just the click of a mouse.

Read More>> Go to the top>> Read More on Cyberspace, New Cold War and Cyber Theft >>

NEWS CHINA

Patent & Trademark Filing in India

Our Indian IP Prosecution Partner – Talwar Advocates

established since 1983, handles patent and trademark filing in the Indian Patent

Offices. The firm has the infrastructure and resources to take on the whole range of conventional and

non-conventional IP issues and offer

clients comprehensive

services in structuring and securing a patent portfolio. The firm

possesses the distinct advantage of filing

Patents, Trademarks and PCT National Phase applications

electronically in Indian Patent Office.

Page 10 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

Samsung Loses Japanese Suit against Apple

Samsung lost a bid to block sales of the iPhone and iPad in Japan when a judge ruled that the Korean firm didn’t negotiate in good faith with Apple before bringing the case to court. As Bloomberg reported, the judge in the case ruled that Samsung didn’t try hard enough to negotiate with Apple, and also rejected its right to seek damages from the Cupertino, Calif., firm. A Samsung spokesperson said the company is disappointed with the decision. “Following a thorough review of the ruling, we will take the measures necessary to protect our intellectual property rights,” the company said in a statement. Apple declined to comment on the suit. The development is the latest in a series of lawsuits around the world between Apple and Samsung, the two biggest smartphone makers in the industry. Both companies have logged wins in courts around the world. Apple won more than $1 billion in damages from Samsung during a high-profile case in California last summer, as well as in a September 2012 case at the International Trade Commission. Samsung, meanwhile, had won a separate Japanese ruling in August.

Read More>> Go to the top>>

Philips to Sell Lifestyle Entertainment Biz to Japan's Funai

Royal Philips Electronics has signed an agreement with Japan's Funai Electric to sell its audio, video, multimedia and accessories businesses for 150 million euro and a brand licence fee. With this deal, Funai now expects to get a boost in expanding its operations in emerging markets, including India. "Royal Philips Electronics...has signed an agreement regarding the transfer of its lifestyle entertainment business to Funai Electric Co," the Dutch firm said. The deal is expected to close in the second half of 2013. The video business will transfer in 2017, related to existing intellectual property licensing arrangements. "Under the terms, Funai will pay a cash consideration of 150 million euro and a brand license fee, relating to a licence agreement for an initial period of five and a half years, with an optional renewal of five years," Philips said. The transaction will leverage Philips' brand image with Funai's supply and manufacturing capability, ensuring that the Philips-branded audio and video products will continue to be available to consumers globally, it added. Commenting on the deal, Philips Chief Executive Officer Frans van Houten said: "With this transaction, we are taking another step in reshaping the consumer lifestyle portfolio and transforming Philips into the leading technology company in health and well-being."

Read More>> Go to the top>>

NEWS JAPAN

Patent Landscape Analysis

With the help of our technical experts,

experienced patent searchers and IP

tools developed in-house, we have been

able to provide valuable reports to

our clients. Our reports have enabled

several technology companies across the

world to take important strategic decisions. We have performed patent

landscape studies for one of the leading

semiconductor companies in the US

and a top LED manufacturer of Asia

to name a few.

Page 11 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

Appcelerator Japanese Mobile Community Comes Out in Force for tiTokyo

Community-Led tiTokyo Conference in Japan Was a Sold-Out Success With Over 200 Mobile Developer Attendees and Participants from Major Japanese Enterprises

Appcelerator®, the leading mobile platform, is pleased to announce the success of its first community-organized conference in Japan, tiTokyo, on February 16, 2013. Situated in the heart of Tokyo and the first of its kind, tiTokyo attracted over two hundred developers for an all-day event focused on mobile innovation. Sponsored by Appcelerator and automotive supplier DENSO Corp., the conference included talks from Appcelerator CEO Jeff Haynie, DENSO ICT General Manager Toshihide Takechi, SOASTA CEO Tom Lounibos, LANICA Co-Founder Kota Iguchi, and Appcelerator Platform Evangelist Ricardo Alcocer. Keynoting the conference, Jeff Haynie, Appcelerator CEO, emphasized the speed at which mobile is disrupting everything, from business models to customer relationships to technology requirements. This is particularly true as enterprises awaken to 'what's possible' only in the rich, diverse context of mobile. Haynie also reflected on the astounding accomplishments and innovations of the over 425,000 mobile developers in the Appcelerator developer community, celebrating that there were 30,000 new mobile apps built on Titanium® in 2012 alone, as well as that 10% of the world's smartphones are using a Titanium powered app.

Read More>> Go to the top>>

WIPO Director General Welcomes Increase in Japan’s Voluntary Contributions to WIPO

World Intellectual Property Organization (WIPO) Director General Francis Gurry welcomed a pledge by the Japanese Government to significantly increase its voluntary funding of technical assistance and capacity building resources for developing countries, a press release by WIPO stated. Gurry said this reflects Japan’s commitment to reinforcing its contribution to the activities of WIPO since the establishment of a funds-in-trust (FIT) program in 1987 to cover IP-related activities in developing countries. "I am grateful to the Japanese Government for its generous contribution to WIPO’s activities. A larger number of stakeholders in emerging economies will be able to benefit from Japan’s experience in using IP-based strategies to promote innovation and growth.” Japan will increase its voluntary contribution to WIPO from the present 3 million Swiss Francs (ChF) to 5 million ChF for 2013. The funds will be dedicated to enhancing IP systems as well as developing human resources. Read More>> Go to the top>>

NEWS JAPAN

Whitespace Analysis

Our Whitespace analysis study comes in

handy if you are looking at the future of

a new technology or looking to diversify into

new avenues of technology. We

compile and study variety of literature

available for a technology- filing

trends add up to our analysis and we provide recommendations and

an idea of the road ahead.

Page 12 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

Protecting Rights as a Means to Enhance Development

Japanese manufacturers are generally shying away from applying for patents in ASEAN countries for reasons such as the “immatureness” of the judicial system in intellectual property (IP) trials and the low level of technology assessment by local IP authorities, said a representative of the Japan Intellectual Property Association. Japanese companies urge member states of the Association of Southeast Asian Nations to improve IP protections so that they can rest assured doing businesses there. Meanwhile, ASEAN countries aim to set up such protections to lure more direct investment by Japanese companies. “In many ways, ASEAN countries do not have concrete infrastructure for IP protection,” JIPA Secretary General Hideo Doi said in an interview with The Japan Times after the 12th JIPA Symposium on the theme “Let’s talk a step further about IP strategy and the key to success in Asia,” held in Nagoya on Feb. 1. “Thus, we would like to support them,” Doi said. At the symposium attended by some 1,000 people involved in IP businesses and companies holding IP, JIPA and the IP offices of each panelist’s country agreed that they would continue exchanging opinions consistently for further development of IP systems in the region. Also, they agreed that JIPA will continue cooperation, for example, by dispatching lecturers, for human resource development projects promoted by the IP offices of each panelist’s country.

Read More>> Go to the top>>

NEWS JAPAN

Patent Watch

The patent alert service is for clients who wish

to remain updated about the latest patents filed in their preferred

field of invention. It is a practical step taken by most of the companies

who desire to keep track of the new and

improved formulations and adjuvant relating to their field of interest or

in respect to a competitor's patents.

Accordingly, we endeavor to observe

patents continually and provide regular updates to our clients. Further,

our search includes online product

directory and other non patent literature

available.

Page 13 of 15

© TT Consultants, 2013. All rights reserved – privileged and confidential

How to Register a Trademark in Taiwan

When Jeff Jones, co-founder of CarPal Car Sharing in Taiwan, suggested I have him write a post on registering a trademark in Taiwan, I was pretty skeptical, mostly because Jeff is not a lawyer. But when I actually got the post, I knew I had to run it, in large measure because Jeff is not a lawyer. I just like how it conveys from the perspective of a businessperson what it is like to have to and then secure a trademark. So here goes. Having recently gone through the process of registering a few trademarks in Taiwan I thought it may be helpful to share the basic process and costs involved. If you have experience registering trademarks in the U.S. you will find the process in Taiwan similar albeit with a few unique twists. Trademark matters in Taiwan are handled through the Taiwan Intellectual Property Office (English) (TIPO), which is part of the Ministry of Economic Affairs in the Executive Yuan. As in the People’s Republic of China, trademarks in Taiwan are registered on a first to register basis. This is an important distinction from the U.S., where trademark rights are attached to use, not registration. Step 1. Hire an attorney or trademark firm to file your application There are a range of firms that provide trademark search, application and maintenance services. These vary from law firms to non-attorney service companies which typically also handle patent matters. The cost for trademark registration services varies widely. Two law firms we contacted quoted between $500-800 USD, in addition to the fees charged by TIPO, to search for trademark availability, draft and file the application. TIPO charges an application fee of NT$3,000 (~$105 USD) per trademark, per class. In our case, my business partner and I were referred to a local Taipei law firm that had worked with other startups. First order of business was signing a power of attorney on behalf of our Taiwanese company granting the attorney authority to file and manage our company’s trademark dealings with TIPO. Step 2. What to trademark and searching for similar marks Registering a trademark in a foreign country presented something unique which I had not considered. Should we register only the Chinese name of our company? Perhaps only the English name? Or yet maybe only our logo which doesn’t include the English or Chinese names, but rather the letters “c” and “p” in a stylized fashion. It is important to consider how you will use your mark. In our case, we wanted to maximize our options since we may use a combination of English, Chinese, and logo across different mediums, so we opted for registering three distinct trademarks. Searching for similar marks is easily done on the TIPO web site in English and Chinese. Once you have identified a potential name or phrase to trademark I recommend doing a preliminary search yourself before even approaching a lawyer or service provider.

EDITORIAL

Technology Transfer/

Commercialization

TT Consultants is working with several

technology companies on patent

licensing, technology/product commercialization,

and know-how transfer. We have:

Established India Business Desk

for the incubation companies of

several national universities of

Taiwan Tie-ups with the

best research institutes in Asia Successfully

commercialized several products and technologies in various parts of

the world.

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Of course you should also check to make sure relevant domain names are available before trademarking. This is as simple as going to a domain registrar such as GoDaddy.com and searching for availability. Step 3. Class selection and completing the application Trademark classes are commonly referred to as classification of goods and services. It is a standard way to describe and organize the types of goods and services to which the marks apply. The Nice Classification of Goods and Services is an international standard adopted by 148 countries. Though Taiwan is not a signatory to international trademark treaties, Taiwan is a member of the World Trade Organization (WTO), and it follows the Nice Classification system. Once you determine which classes(s) to file your trademark under, you are ready to complete the application. You must attach a few examples to your application showing the marks. In our case, we submitted copies of our business cards and a copy of a marketing brochure we had produced as examples of how our marks would be used. Step 4. Wait Once the application is accepted by TIPO the wait begins. According to TIPO applications normally take between 8-10 months from submission to registration. If TIPO has any questions or concerns about your application they will contact the attorney/service firm to seek clarification. In our case we received no communication from the time our applications were submitted in mid-April until notification of approval came 6 months later in October. Step 5. Take it to the bank When TIPO sends notification that your trademark has been approved for registration they also send a bill for NT$2,500 (~$90 USD). You must take the bill to a specific branch of a particular bank to pay the fee. Step 6. Registration, Publication and Opposition About 1-2 months after you pay the registration fees discussed in Step 4, TIPO will issue the formal notice of registration. Congratulations, you now have a registered Taiwan trademark valid for 10 years from the date of publication, at which time you can file to extend for a subsequent 10 year period. TIPO publishes all new trademark registrations, similar to the trademark gazette published by the U.S. Patent & Trademark Office. Others have a three month period to file an opposition to the registration of the trademark. I should note that though Taiwan is a first-to-register country, if you do not use your trademark in commerce for a period of three years your mark may be cancelled. By Dan Harris (Posted in Legal News) Go to the top>>

Patent Acquisition Services

Patent Acquisition/ In-Licensing

We work closely with our clients for acquiring the right patents at the

right value. The support ranges from landscape, evaluating

patent strength to gauging enforcement

value.

Patent Out-Licensing We help our clients to license their patents to the right purchasers for

the right value. This includes identifying the

right buyers, performing

infringement analysis and other important

aspects.

EDITORIAL

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