Transcript APAA Taiwan Group (1)

Asian Patent Attorneys Association
The Recognized Group of Taiwan
Group Report
By
Thomas Q.T. Tsai
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%
Patent Practice (cont.)

IP Litigation before District Prosecutors’ Offices
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
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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

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Deadlines for Submitting Priority
Documents Extended
“Involuntary Disclosure” as Exception
to Novelty Bar
Deadline for Requesting a Reexamination Extended
Post-Grant Invalidation only
Patent Law Amendment
(cont.)
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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 Practices
Effective as of July 1, 2004
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Guidelines for Examination of Sound Marks
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Guidelines for Examination of 3D Marks
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Guidelines for Determining the Likelihood
of Confusion
Guidelines for Examination of
Sound Marks
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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
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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
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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
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Adding Anti-Circumvention Provision
Eliminating the Distinction between
“Intent for Profit” and “Not-Intent for
Profit” for Criminal Penalty
Increasing the Penalties for
Manufacturing and Selling Pirated CDs
2004 Copyright Law Amendment
Effective as of September 3, 2004
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Clarifying Definition for Fair Use
Suspending the Release of Alleged
Copyright Infringement Goods at the
Custom
First Patent Compulsory License
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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.
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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