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We are celebrating the 10^th birthday of our podcast IP Fridays! Join us in Atlanta on Monday evening, the 20^th May 2024 and meet us in person! Details will be posted on our website ipfridays.com and on social media!  We had started the podcast at the 2014 INTA Annual Meeting in Hongkong so we thought it would be a good idea to celebrate the 10^th anniversary also during an INTA Annual Meeting!

In this episode of the IP Fridays podcast, we were joined by three experts from Wisdom International Patent and Law Office in Taiwan: founder George J.H. Huang, patent attorney Sandy Huang, and international affairs manager Zoe Kwong.

The discussion began with an overview of the latest guidelines for computer software patents in Taiwan, which now require that the software significantly utilizes hardware resources to be eligible for patent protection. This marks a departure from older guidelines and incorporates elements from Japanese regulations.

The experts also compared patent eligibility criteria between Taiwan and China, noting significant differences. In China, the focus is on using technical means to solve technical problems according to natural laws, which can often lead to challenges in proving the technical nature of inventions, particularly those that might be considered as business methods or mathematical rules.

Moving to trademarks, it was noted that Taiwan operates under a “first to file” system and does not require evidence of use at the time of application. This is particularly important for overseas applicants to understand, as early filing can prevent issues with trademark squatting. Taiwan does not participate in the Madrid Protocol, so international applicants must file directly in Taiwan.

Recent legislative updates were also covered, highlighting the new accelerated examination process for trademarks in Taiwan, which can significantly shorten the registration timeline. However, this process is best suited for clear-cut cases, as complex or disputed marks may still face lengthy examinations.

The episode concluded with a look at changes to the trademark agent system in Taiwan, which now requires agents to pass an exam and undergo annual training to ensure they maintain a high standard of professional knowledge.

Overall, the podcast provided a comprehensive look into the intellectual property landscape in Taiwan, offering key insights and strategic advice for navigating patent and trademark issues in the region.

Here is the full transcript:

We have three guests today on the IP Friday’s podcast from Wisdom International Patent and Law Office, a law firm located in Taiwan. They are Mr. George J.H. Huang, Ms. Sandy Huang, and Ms. Zoe Kwong.

George J.H. Huang is the founder of Wisdom International Patent and Law Office. Having over 27 years of experience in the intellectual property field, George is skilled at handling patent, trademark, and design matters, from drafting and prosecution to cancellation opposition and other contentious work. George has also been individually ranked and recognized as a recommended individual in the IAM Patent 1000, the WTR 1000, and the Asia IP Rankings. He is the author of two Japanese books, Taiwan Trademark Practice Guide and Taiwan Patent Practice Guide, which are highly praised by in-house counsels and critics.

Sandy Huang graduated from the National Taiwan University with a master’s degree in chemical engineering. She is a registered patent attorney and her practice focuses on patent drafting, prosecution, disputes, and invalidation in various countries, particularly in the areas of chemical engineering, mechanics, and semiconductors.

Sandy also has extensive experience in patent search, freedom to operate analysis, and patent portfolio management. And finally, Zoe Kwong is the firm’s international affairs manager. Welcome George, Sandy, and Zoey to the IP Friday’s podcast.

Thank you.

 Great, so let’s kick it off with our first question today.

Could you introduce to our listeners the current regulations on the eligibility of computer software patents in Taiwan?

Yes, sure. Our patent examination guidelines for computer software has been revised in 2021, and the criteria on determining eligibility, clarity, and invented staff was revised a lot. Regarding the eligibility, the old guidelines in Taiwan incorporated some regulations of EPO and USPTO, considering whether the invention is nothing more than the idea of doing that thing on a computer, which might be the old opinions of the USPTO before 2014, and whether there is further technical effect going beyond the normal physical interactions between the program and the computer.

But the new guideline in Taiwan is very different now. It introduced Japanese regulations and determined whether the information processing via computer software is realized through the utilization of hardware resources.

So under the current regulations in Taiwan, the most important part to comply with the eligibility requirements is to recite a substantial information processing in a claim, and state in a claim that the information processing is realized by the cooperation between computer software and hardware resources.

And what about China? Can you comment on that? Does Taiwan and China use the same language, and are there similar regulations?

Now, China’s regulation is quite different from Taiwan. China adopts a three-element test to determine whether the invention uses technical means to solve a technical problem and achieve the technical effects complying with the laws of nature. For example, if the invention itself solves a certain technical problem utilizing laws of nature, but not utilizing rules or methods set by human mental activities, and obtains technical effects other than effects produced by algorithm or business method itself, the invention meets the requirements of eligibility in China. But on the other hand, under current practice in China, whether the problem to be solved is technical is an important part. It is quite common that the patent examiner deems the problem to be solved is not technical. It is merely a business method or a math rule, and then directly considers the invention ineligible.

So in China, it would be very important to emphasize why the problem to be solved is technical in the specification.

Now, given that Taiwan and China have quite different regulations, what would be your suggestion for patent applicants if they wish to obtain patent rights in both Taiwan and China with one application? Can that be done?

Oh yeah, in my opinion. Though the regulations in Taiwan and China are quite different, the concepts are actually similar. They both focus on whether the claimed invention utilizes hardware to execute software in order to solve a technical problem. So I will suggest the applicants to fully illustrate application scenarios and the technical problems present in the scenarios when drafting the specification.

And applicants should also describe some examples in the specification to demonstrate how the algorithm is combined with various application scenarios and how to achieve technical effects after the combination. Then the technical means should also be emphasized in the claims. So the eligibility requirements in both of Taiwan and China may be fulfilled. And on the other hand, as we emphasize the technical means, technical problems and the technical effects a lot in the specification for the eligibility, it would also help a lot for the inventive step of the patent application in both of Taiwan and China.

Let me ask you a practical question. Do you ever run into situations where you’re able to get a patent registered in Taiwan but not in China? Does that ever happen where you only get it in one country?

So for our experience, we didn’t have that kind of experience since maybe the application might face some problems in China and they have to overcome more office actions in China. But yeah, maybe the claims obtained may be different from in Taiwan and China, but we can obtain the patent rights in both of China and all of Taiwan and China.

Okay. Let’s switch gears a little bit and talk about trademarks, which is very near and dear to my heart.

Are there any points to note for overseas applicants who would like to get a trademark registered in Taiwan?

I think the very first thing would be Taiwan adopts a versatile file system, which is different from US. That trademark rights go to versatile use. We recommend that applicants should file a trademark application in Taiwan as soon as they decide on the brand strategy. Also, Taiwan is not a party to the Madrid protocol. However, applicants may claim rights of priority based on an earlier application filed in one of the WTO member status within six months.

The second point to note would be trademark watching is quite important to foreign brand owners. Us applicants are not re