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Talwar Newsletter volume Eight


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Talwar Newsletter volume 8

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Talwar Newsletter volume Eight

  1. 1. CONSULTANTS Applying Intelligence to IP - Globally NEWSLETTER Ranging from Innovations to Intellectual PropertyVol. 8,Mar - Apr’2013
  2. 2. 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
  3. 3. 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 Worlds 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 Japans 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 •© TT Consultants, 2013. All rights reserved – privileged and confidential
  4. 4. 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. Read More>> Go to the top>> Page 2 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  5. 5. 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. Read More>> Go to the top>> Page 3 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  6. 6. 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 Worlds 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 governments 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. Read More>> Go to the top>> Page 4 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  7. 7. 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.” Read More>> Go to the top>> Page 5 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  8. 8. 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 Read More>> Go to the top>> 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 years 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. Read More>> Go to the top>> Page 6 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  9. 9. 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 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. companys 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>> Page 7 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  10. 10. 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>> 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 >> Page 8 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  11. 11. 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© TT Consultants, 2013. All rights reserved – privileged and confidential
  12. 12. 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 Read More>> Go to the top>> companies across the world to take important strategic Philips to Sell Lifestyle Entertainment Biz to Japans Funai decisions. We have performed patent Royal Philips Electronics has signed an agreement with Japans 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 Funais 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>> Page 10 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  13. 13. 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 whats 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 worlds 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. Read More>> Go to the top>> Page 11 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  14. 14. 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 competitors 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, Read More>> Go to the top>> our search includes online product directory and other non patent literature available. Page 12 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential
  15. 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© TT Consultants, 2013. All rights reserved – privileged and confidential
  16. 16. 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 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, 2013. All rights reserved – privileged and confidential
  17. 17. TT Consultants INDIA USA TAIWAN Office 8, Tower B, 3rd Floor, D.L.F, I.T park TT Consultants LLC Chandigarh Washington DC Room 410, Technology Transfer & Business Tainan (Branch Office) Chandigarh (U.T)-160101, India 1701, Pennsylvania Avenue, NW, Incubation Center, NCKU, T: 0172-4674711 Washington DC. 20006 No. 1 University Road, Tainan City 701 T: 202-370-6170 T: +886-6-2368814 Unit number 252, 2nd floor, Tower B2, Email: Gurgaon Spaze I-Tech Park, Sector49, Si-Soft Research Center, 1A2, Lising 1st Road, Hsinchu Sohna Road, Gurgaon-122002 Hsinchu City Mobile: +91-9876667711 Email: Email: Email: Email: Subscribe/Opt in If you wish to receive this Newsletter in future, please click here. Feedback/Suggestion We will be happy to know your feedback & suggestion on the same. Kindly send us an email with your feedback. Unsubscribe If you do not wish to receive this Newsletter in future, please click here, else just reply this mail with the word "Unsubscribe" in the subject of the mail. Disclaimer While every care has been taken in the preparation of this News Bulletin to ensure its accuracy at the time of publication, TT Consultants assumes no responsibility for any errors which despite all precautions, may be found herein. Neither this bulletin nor the information contained herein constitutes a contract or will form the basis of a contract. The material contained in this document does not constitute/substitute professional advice that maybe required before acting on any matter. *COPYRIGHT NOTICE:-© 2013, India. All Rights reserved with TT Consultants Go To Top >> Page 15 of 15© TT Consultants, 2013. All rights reserved – privileged and confidential