Asian Patent Attorneys Association By Thomas Q.T. Tsai The Recognized Group of Taiwan Group Report

Patent Practice n Patent and Trademark Applications YearPatentTrademark ,40261, ,74265,907 Increase/ Decrease +7.06%+6.77%

n IP Litigation before District Prosecutors’ Offices Patent Practice (cont.) YearNew Cases Dissolved Cases Indicted Cases The Average Days to Dissolve One Case Increase/ Decrease

New IP Practices n Newly Effective Patent Law - Effective as of July 1, 2004 n New Trademark Practices - Registration of Sound Marks and 3D Marks - Determination of the Likelihood of Confusion - Effective as of July 1, 2004 n 2004 Copyright Law Amendment - Effective as of September 3, 2003

Patent Law Amendment n Deadlines for Submitting Priority Documents Extended n “Involuntary Disclosure” as Exception to Novelty Bar n Deadline for Requesting a Re- examination Extended n Post-Grant Invalidation only

Patent Law Amendment (cont.) n Examining Cases Involving Infringement Litigation on a Priority Basis n Patent Annuity Reduction n Formality Examination for Utility Model Patent Applications n Complete Decriminalization of Patent Infringement Acts

New Trademark Practices Effective as of July 1, 2004 n Guidelines for Examination of Sound Marks n Guidelines for Examination of 3D Marks n Guidelines for Determining the Likelihood of Confusion

Guidelines for Examination of Sound Marks n Sound Marks: commercial tunes, rhythms, human voices, bells, ring tunes, or animal calls. n Represented by musical score, numerical musical score, or a written description, music notes, or literal description, along with a CD-ROM recording the sound. n Distinctiveness Requirement must be met. n If the sound represent the quality, function, or description of the goods/service, it is not distinctive. n No registration for generic sound.

Guidelines for Examination of 3D Marks n 3D Marks: consist of height, width, and length. n Described by 3D drawing. Perspective drawings or samples are optional. n Distinctiveness Requirement must be met. n 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. n 3D marks must be distinctive and non-functional.

Guidelines for Determining the Likelihood of Confusion n 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 n Adding Anti-Circumvention Provision n Eliminating the Distinction between “Intent for Profit” and “Not-Intent for Profit” for Criminal Penalty n Increasing the Penalties for Manufacturing and Selling Pirated CDs

2004 Copyright Law Amendment Effective as of September 3, 2004 n Clarifying Definition for Fair Use n Suspending the Release of Alleged Copyright Infringement Goods at the Custom

First Patent Compulsory License n 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. n 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