Applying Intelligence to IP - Globally

CONSULTANTS
Applying Intelligence to IP - Globally

NEWSLETTER
Ranging from Innovations to Intellectual Property

Vol. 8,
Mar - Apr’2013

NEWSLETTER

Contents

1. Headlines 1

2. News India 2

3. News China 6

4. News Japan 10

5. Editorial 13

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

INDIA CHINA JAPAN EDITORIAL

File Foreign Application Prosecution History with Indian Patent Office
HEADLINES INDIA

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
•
•

China Releases Intellectual Property Plan for Strategic Emerging Industries
HEADLINES CHINA

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
•

Samsung Loses Japanese Suit against Apple
HEADLINES JAPAN

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
•
•

How to Register a Trademark in Taiwan
EDITORIAL
•


NEWS INDIA

File Foreign Application Prosecution History with Indian Patent
Office

During the prosecution of the Indian patent, one provision (Section 8),
Patent Support Services which has attained importance is the requirement of filing information about
foreign patent applications in relation to the same or substantially the same
At TTC, we provide invention. Noncompliance of this provision is a ground for pre-grant opposition,
patent litigation support, post-grant opposition and revocation of a patent, irrespective of the fact that the
patent prosecution invention is novel, non-obvious and useful.
support, licensing The courts and tribunals in the recent past in India have revoked the patents for
support, patent non-compliance with Section 8. This article analyzes the relevant statutory
acquisition support, provisions and the learning from recent decisions.
technology transfer What is the Section 8 Requirement?
consulting, patent Section 8 of the Indian Patents Act, 1970 comprises of two mandatory
portfolio management requirements: voluntary filing of information (Section 8 (1)) and filing of
and other legal support information upon request by the Controller (Section 8(2)) in relation to patent
services to leading applications filed outside India for the same or substantially the same invention…..
patent law firms,
Read More>> Go to the top>>
companies, universities,
research institutes and
India Plans Price Controls for Patented Drugs
intellectual property
owners. 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.


Page 2 of 15


NEWS INDIA

Indian Technology Companies Sharpen Focus on Patents

India’s software exporters are trying to transform themselves from Patent Invalidation
extravagantly staffed body shops doing grunt work by stepping up their Search
intellectual property (IP) efforts as well as taking advantage of the opportunities
We ‘scour the earth’
that trends and technologies such as social media, mobiles and cloud computing
when it comes to
offer.
searching for prior art
By trying to generate more revenue from so-called non-linear, or non-
in order to invalidate a
headcount-related businesses, these companies are trying to shield themselves
troublesome patent.
from the risks that these technologies present to traditional off-shoring and
We have helped
delivery models.
several US and Asian
Among the effects of this trend is a concerted effort to file for patents, with IT
companies save huge
companies trying to earn more with fewer employees as cloud computing alters
litigation costs by
the future of traditional information technology (IT) outsourcing with a pay-per-
uncovering highly
use or subscription model.
Other initiatives include automation, templates for industry segments that can
useful prior arts. We
be re-used with minimal customization, re-use of assets and codes, platform
have Mandarin,
solutions and tools such as Six Sigma, besides value-added services such as
Japanese and Korea
analytics and IP. native searching
capability. We are a
Read More>> Go to the top>> preferred choice for
companies involved in
India Ranks 12 in Global Innovation Index; Germany, Japan in complex patent
Lead litigation and have
represented many Joint
The overall environment in India is perceived as being conducive for
innovation by business executives from 25 countries across the world, a report
Defense Groups
said.
(JDGs) in such cases to
According to the GE’s annual Global Innovation Barometer report, 55 percent of
identify relevant prior
business executives from the 25 markets regard the Indian environment for art for invalidating
innovation as strongly ‘innovation conducive’. potentially dangerous
This puts the country in the 12th position of the country ranking based on this patents.
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.


Page 3 of 15


NEWS INDIA

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
Patentability Search 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
A thorough patentability
K. Hamied, recounting the days leading up to a dramatic event that put India,
assessment search
indelibly, on the global healthcare map.
conducted on an
The home-spun drug company had just taken the battle on drug prices right into
exhaustive list of patent
the backyard of multinational drug-majors, by slashing its price on a cocktail of
and non-patent
HIV/AIDS drugs sold in Africa. Cipla offered the triple-drug combination,
databases. We offer
Triomune, at less than $1 a day, about $350 annually. And this had taken the
innovative search wind out of the multinational campaign, whose price for the combined three-
reports that come along drug therapy was about $12,000 per year.
with a key feature chart
and many value Read More>> Go to the top>>
additions offered by
none other in the India Emerging One of World's Best Legal Process Outsourcing
industry. This service is Centres
being extensively used
Legal services in India have steadily grown in the last five years and the
by the best research
country has become one of the best Legal Process Outsourcing (LPO) destinations
institute of Asia, several
in the world, the government's annual economic report card says.
national universities of
The Economic Survey 2012-13 that Finance Minister P Chidambaram presented
Taiwan, top law firms in
in parliament showed legal services had grown at 8.2 percent annually from
the US and 5 fortune 2005-06 to 2011-12. The Indian legal profession consists of nearly 1.2 million
500 companies to name registered advocates and there are about 950 Law schools. Every year
a few. 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.


Page 4 of 15


NEWS INDIA

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
Structure & Sequence
scarce anti-cancer drug. Search
Doxil’s chemical name doxorubicin hydrochloride liposome injection is currently When you request a
on the USFDA’s drug shortage list. This medicine approval is expected to further chemical
boost export earnings of Sun Pharma, which has significant presence in the US.
structure/substructure
United States is the world’s largest drug market.
search, our domain
Doxorubicin HCl liposome injection is used to treat patients with ovarian cancer
specific searchers with
that has progressed or recurred after platinum-based chemotherapy.
extensive experience
For products on the shortage list, the FDA’s office of generic drugs is using a
perform patent searches
priority review system to expedite the review of generic applications to help
and deliver insightful
alleviate shortages.
results for compounds
“This generic Doxorubicin HCl Liposome injection USP, 2 mg/mL is therapeutically
matching the query
equivalent to Doxil Liposome injection, 2 mg/mL of Janssen Research and
structure, as well as for
Development,” said a company statement.
compounds containing
Read More>> Go to the top>> the query structure as a
subset (substructure) of a
Imports of Pharma Drug Ingredients See 93% Increase larger structure.
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.”


Page 5 of 15


NEWS CHINA

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
Freedom to Operate
departments, including the National Development and Reform Commission, the
Search
Ministry of Education, and the Ministry of Science and Technology.
We provide a The Plan has specified 50 measures for the country’s intellectual property
proactive patent development in the following eight areas:
study for mitigating  Strengthening intellectual property analysis and appraisal capacity
the risks involved  Improving intellectual property management capabilities
before entering a  Promoting intellectual property creation layout
new jurisdiction and  Strengthening intellectual property transformation and utilization capacity
have the capability to
 Enhancing intellectual property service capabilities
search in various
geographies  Strengthening intellectual property information platform construction
including most of the  Optimizing the intellectual property development environment
Asian countries and  Strengthening foreign-related intellectual property work
some European
countries. Our
experienced
China, South Korea Lead BRICK Nations in Patent Filings – Study
professionals
perform an in-depth China and South Korea by far outpace other rapidly developing "BRICK"
search and very nations in new invention patent applications, according to a study focusing on
closely examine the innovation in several emerging economies.
prior art vis-à-vis the The study, released Wednesday by the Intellectual Property & Science business of
product features. Thomson Reuters, looked at research growth in Brazil, Russia, India, China and
Claim charts are South Korea, defined as the BRICK countries.
prepared based upon In previous years, the study focused on the group of nations commonly referred to
the national patent as BRIC, but this year's report included South Korea.
laws. 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.


Page 6 of 15


NEWS CHINA

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
Patent Drafting &
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
Illustrations
available in Chinese. A well drafted patent is
On November 29, 2012, SIPO has officially launched the English interface of the the key to a strong
System. The English interface can be accessed at patent and holds the
http://cpquery.sipo.gov.cn/index_en.jsp?language=en_US. highest chances of being
The System has two available log-in portals: accepted by the
• E-Filing Registered User Inquiry (registered user) - User needs a registered
National Patent Office.
username and password to access this version of the System. This version of
Our experienced and
the System will help the users registered for electronic applications to access
technically trained
all the information filed under its account.
professionals do a
• Public Inquiry (general user) - This version of the System is available for
comprehensive
public use, but the user must first agree to the terms of a declarative legal
understanding of the
statement before entering the site.
subject matter and use
Read More>> Go to the top>> their exceptional
communication skills to
Adept Technology Receives $1.1 Million Order from Major China elucidate the invention
Civil Explosive Technology and Equipment Turn Key Service and the draft is by
Provider default reviewed by an
Indian Patent Attorney.
Adept Technology, Inc. (Nasdaq:ADEP), a leading provider of intelligent Further, the draft is
robots and autonomous mobile solutions and services, today announced that reviewed by respective
Shenzhen King Explorer Science & Technology Co., Ltd., the largest China Civil filing country Patent
Explosive Turn Key Service Provider, plans to upgrade more than 100 customer Attorney.
emulsion explosive lines they have built worldwide with fully automated packaging We have Illustrators
lines by using multiple Adept Quattro s650 parallel robots in the next three years. who are well conversant
Each line requires either two or four Quattro s650 parallel robots depending on its with the rules of
throughput. The $1.1M order is expected to be fulfilled over the course of the 2013 USPTO, PCT and
calendar year. other National Patent
"By utilizing Adept Quattro robots and vision-guided conveyor tracking the Offices.
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."


Page 7 of 15


NEWS CHINA

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”
Claim Chart (hereinafter the “Newly-added Services”) in Class 35. The CTMO, in response to
Preparation 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
This search helps in
and Services for Registration of Marks in the People’s Republic of China” and to
identifying the
begin to accept trademark registration applications for the Newly-added Services
potential infringers of a
from 1 January 2013.
particular patent
1. Definition of Newly-added Services
portfolio. Over the
The Newly-added Services are defined by the CTMO as “the retail (wholesale)
years, we have evolved
services of bringing together, for the benefit of others, of a variety of goods
an innovative and
(excluding the transport itself), enabling customers to conveniently view and
effective strategy to
purchase those goods provided by retailers (wholesalers)”. Such services are a
identify infringing
combination of services provided for the purpose of encouraging customers to
products/standards
purchase the said goods, including services of providing goods, displaying goods,…..
and ascertaining the
infringement. This Read More>> Go to the top>>
service is used by a
leading semiconductor Proposed Changes to the Chinese Trademark Law
manufacturer and
Recognizing the economic importance of a well-functioning trademark
some fortune 500
system and in view of recent high-profile trademark disputes, such as the widely
companies across the
publicized iPad dispute which was reputedly settled for a payment of about
globe.
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 on the third revision of China’s Trademark Law>>
Read more on Latest law revision voices support for 'sonic trademarks' >>

Page 8 of 15


NEWS CHINA

Designed in America, Made in China: Protecting Intellectual
Property from Cyber Espionage Patent & Trademark
Filing in India
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 Our Indian IP
protect U.S. interests at home and abroad. Accompanying this steep price tag is an Prosecution Partner
expectation that the Pentagon’s intellectual property is secured to Pentagon – Talwar Advocates
standards. Yet in the era of cyber warfare such assumptions have become established since
worthless. 1983, handles patent
Foreign hackers, particularly from China, have become increasingly adept in their and trademark filing
ability to crack into American computer systems and access our most heavily in the Indian Patent
guarded and classified intellectual property. FBI director Robert Mueller III Offices. The firm has
admonished that cyber attacks would soon replace terrorism as the agency’s the infrastructure and
primary concern. Most troubling is that neither the federal government, the resources to take on
Pentagon, nor private enterprises are immune. the whole range of
At a congressional hearing on cyber security this past April, Rep. Michael McCaul conventional and
(R-Texas) lamented, “When I look at the theft of intellectual property to the tune non-conventional IP
of $1 trillion, that’s a serious economic issue for the United States.” McCaul, who issues and offer
is chairman of the House Homeland Security Subcommittee on Oversight, clients
Investigation, and Management, made this statement in reference to the theft of comprehensive
blueprints for the F-35 Joint Striker Fighters and the F-22 combat aircraft, which services in structuring
were stolen by Chinese hackers in 2009. These are two of the most advanced and
and securing a patent
expensive stealth aircrafts in the world, but somehow cyber militants were able to
portfolio. The firm
obtain their plans from the depths of our most secretive dwellings with just the
possesses the distinct
click of a mouse.
advantage of filing
Read More>> Go to the top>> Patents, Trademarks
Read More on Cyberspace, New Cold War and Cyber Theft >> and PCT National
Phase applications
electronically in
Indian Patent Office.

Page 9 of 15


NEWS JAPAN

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
Patent Landscape to seek damages from the Cupertino, Calif., firm.
Analysis A Samsung spokesperson said the company is disappointed with the decision.
With the help of our “Following a thorough review of the ruling, we will take the measures necessary to
technical experts, protect our intellectual property rights,” the company said in a statement.
experienced patent Apple declined to comment on the suit.
searchers and IP The development is the latest in a series of lawsuits around the world between
tools developed in- Apple and Samsung, the two biggest smartphone makers in the industry. Both
house, we have been companies have logged wins in courts around the world. Apple won more than $1
able to provide
billion in damages from Samsung during a high-profile case in California last
valuable reports to
our clients. Our summer, as well as in a September 2012 case at the International Trade
reports have enabled Commission. Samsung, meanwhile, had won a separate Japanese ruling in August.
several technology
companies across the
world to take
important strategic Philips to Sell Lifestyle Entertainment Biz to Japan's Funai
decisions. We have
performed patent Royal Philips Electronics has signed an agreement with Japan's Funai
landscape studies for Electric to sell its audio, video, multimedia and accessories businesses for 150
one of the leading million euro and a brand licence fee.
semiconductor With this deal, Funai now expects to get a boost in expanding its operations in
companies in the US emerging markets, including India. "Royal Philips Electronics...has signed an
and a top LED agreement regarding the transfer of its lifestyle entertainment business to Funai
manufacturer of Asia Electric Co," the Dutch firm said.
to name a few.
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."


Page 10 of 15


NEWS JAPAN

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.
Whitespace Analysis
Sponsored by Appcelerator and automotive supplier DENSO Corp., the conference
included talks from Appcelerator CEO Jeff Haynie, DENSO ICT General Manager Our Whitespace
Toshihide Takechi, SOASTA CEO Tom Lounibos, LANICA Co-Founder Kota Iguchi, analysis study comes in
and Appcelerator Platform Evangelist Ricardo Alcocer. handy if you are
Keynoting the conference, Jeff Haynie, Appcelerator CEO, emphasized the speed looking at the future of
at which mobile is disrupting everything, from business models to customer a new technology or
relationships to technology requirements. This is particularly true as enterprises
looking to diversify into
new avenues of
awaken to 'what's possible' only in the rich, diverse context of mobile. Haynie also
technology. We
reflected on the astounding accomplishments and innovations of the over compile and study
425,000 mobile developers in the Appcelerator developer community, celebrating variety of literature
that there were 30,000 new mobile apps built on Titanium® in 2012 alone, as well available for a
as that 10% of the world's smartphones are using a Titanium powered app. technology- filing
trends add up to our
Read More>> Go to the top>> analysis and we provide
recommendations and
WIPO Director General Welcomes Increase in Japan’s Voluntary an idea of the road
Contributions to WIPO ahead.

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.

Page 11 of 15


NEWS JAPAN

Protecting Rights as a Means to Enhance Development
Patent Watch
Japanese manufacturers are generally shying away from applying for
The patent alert service patents in ASEAN countries for reasons such as the “immatureness” of the judicial
is for clients who wish system in intellectual property (IP) trials and the low level of technology
to remain updated assessment by local IP authorities, said a representative of the Japan Intellectual
about the latest patents Property Association.
filed in their preferred Japanese companies urge member states of the Association of Southeast Asian
field of invention. It is a Nations to improve IP protections so that they can rest assured doing businesses
practical step taken by there. Meanwhile, ASEAN countries aim to set up such protections to lure more
most of the companies direct investment by Japanese companies.
who desire to keep “In many ways, ASEAN countries do not have concrete infrastructure for IP
track of the new and protection,” JIPA Secretary General Hideo Doi said in an interview with The Japan
improved formulations Times after the 12th JIPA Symposium on the theme “Let’s talk a step further about
and adjuvant relating to IP strategy and the key to success in Asia,” held in Nagoya on Feb. 1.
their field of interest or “Thus, we would like to support them,” Doi said. At the symposium attended by
in respect to a some 1,000 people involved in IP businesses and companies holding IP, JIPA and
competitor's patents. the IP offices of each panelist’s country agreed that they would continue
Accordingly, we exchanging opinions consistently for further development of IP systems in the
endeavor to observe region. Also, they agreed that JIPA will continue cooperation, for example, by
patents continually and dispatching lecturers, for human resource development projects promoted by the
provide regular updates IP offices of each panelist’s country.
to our clients. Further,
our search includes
online product
directory and other non
patent literature
available.

Page 12 of 15


EDITORIAL

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 Technology
perspective of a businessperson what it is like to have to and then secure a trademark. Transfer/
So here goes. Commercialization
Having recently gone through the process of registering a few trademarks in Taiwan I
TT Consultants is
thought it may be helpful to share the basic process and costs involved. If you have
working with several
experience registering trademarks in the U.S. you will find the process in Taiwan
technology
similar albeit with a few unique twists.
companies on patent
Trademark matters in Taiwan are handled through the Taiwan Intellectual Property
licensing,
Office (English) (TIPO), which is part of the Ministry of Economic Affairs in the
technology/product
Executive Yuan.
commercialization,
As in the People’s Republic of China, trademarks in Taiwan are registered on a first to
and know-how
register basis. This is an important distinction from the U.S., where trademark rights
transfer. We have:
are attached to use, not registration.
Step 1. Hire an attorney or trademark firm to file your application  Established India
There are a range of firms that provide trademark search, application and Business Desk
maintenance services. These vary from law firms to non-attorney service companies for the incubation
which typically also handle patent matters. The cost for trademark registration companies of
services varies widely. Two law firms we contacted quoted between $500-800 USD, in several national
addition to the fees charged by TIPO, to search for trademark availability, draft and universities of
file the application. TIPO charges an application fee of NT$3,000 (~$105 USD) per
Taiwan
trademark, per class.
 Tie-ups with the
In our case, my business partner and I were referred to a local Taipei law firm that had
best research
worked with other startups. First order of business was signing a power of attorney on
institutes in Asia
behalf of our Taiwanese company granting the attorney authority to file and manage
 Successfully
our company’s trademark dealings with TIPO.
commercialized
Step 2. What to trademark and searching for similar marks
several products
Registering a trademark in a foreign country presented something unique which I had
and technologies
not considered. Should we register only the Chinese name of our company? Perhaps
in various parts of
only the English name? Or yet maybe only our logo which doesn’t include the English
the world.
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.

Page 13 of 15


EDITORIAL

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
Patent Acquisition GoDaddy.com and searching for availability.
Services Step 3. Class selection and completing the application
Patent Acquisition/ In- Trademark classes are commonly referred to as classification of goods and services. It
Licensing is a standard way to describe and organize the types of goods and services to which
We work closely with the marks apply. The Nice Classification of Goods and Services is an international
our clients for acquiring standard adopted by 148 countries.
Though Taiwan is not a signatory to international trademark treaties, Taiwan is a
the right patents at the
member of the World Trade Organization (WTO), and it follows the Nice Classification
right value. The
system.
support ranges from
Once you determine which classes(s) to file your trademark under, you are ready to
landscape, evaluating
complete the application. You must attach a few examples to your application
patent strength to
showing the marks. In our case, we submitted copies of our business cards and a copy
gauging enforcement
of a marketing brochure we had produced as examples of how our marks would be
value.
used.
Patent Out-Licensing Step 4. Wait
We help our clients to Once the application is accepted by TIPO the wait begins. According to TIPO
license their patents to applications normally take between 8-10 months from submission to registration. If
the right purchasers for TIPO has any questions or concerns about your application they will contact the
the right value. This attorney/service firm to seek clarification. In our case we received no communication
includes identifying the from the time our applications were submitted in mid-April until notification of
right buyers, approval came 6 months later in October.
performing Step 5. Take it to the bank
infringement analysis When TIPO sends notification that your trademark has been approved for registration
and other important they also send a bill for NT$2,500 (~$90 USD). You must take the bill to a specific
aspects. 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>>

Page 14 of 15


TT Consultants

INDIA USA TAIWAN

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