Figure 1: NAIP patent attorney Jay Kao; Photo by Conor Stuart

Jay Kao, one of North America Intellectual Property Corp’s patent agents attended the recent 2017 International Symposium on Patent Strategy and Practice, hosted by the Taiwan Patent Attorneys Association and National Taiwan University of Technology. The conference also featured visiting speakers from the UK’s Chartered Institute of Patent Attorneys. Jay gave us a rundown below of his takeaway from the conference and on the news that patent filings with the Taiwan Intellectual Property Office (TIPO) continued their downward trend in 2016.

An account of our interview with Jay Kao is as below:

IP Observer: What did you think were the most important takeaways from the conference?

Jay Kao: The presentation by Nicholas Malden [Chartered Institute of Patent Attorneys] on what patent attorneys should look out for in drafting patent descriptions in Japan, China, Europe and the US was very interesting. When it comes to European applications, whether in my own experience or as he mentioned in his talk, when you’re making changes in response to an office action, it’s very easy to cross the line into your changes constituting new matter. This is quite different from how you approach changes to a US application. He gave a specific example on this. If there is a claim to a device which comprises Component A + Component B, and the description says that A can be C, D, or E, and that B can be F, G, or H, it’s often impossible to amend the claims to a device in which Component A is D and Component B is G. This is what Malden termed “the Article 123(2) / (3) EPC trap”, in that if an amendment is made before grant which adds subject matter and limits the scope of the claims, the amendment is illegal (Article 123(2) EPC), but cannot be removed if this would broaden the claim scope (Article 123(3) EPC). This means that you have to specifically mention any combinations you can foresee as useful. You can’t draft your claims as broadly as you would for the US, as the US allows you to make substantive amendments, whereas Europe does not. In my experience it’s harder to get to the grant stage with European patent rights. You have to put more detail into the description for European applications, including how the invention will be applied. The US and Japan are the most flexible in this regard, whereas China is slightly more rigid, but less so than Europe.

For applications in all four places it is also best to write as little in terms of prior art. If you write too much, then it can be used against your application as applicant admitted prior art as grounds for rejection.

Another point that was brought up at the conference was the difference in design patents between the UK and Taiwan. The UK designs are very different in that they don’t require a substantive examination. I think that Taiwan is the only country to require a substantive examination for design patents, as most countries only require a formality examination. This is because Taiwan’s search system is very well constructed, which allows TIPO to complete this kind of examination within six months. The rights are a little more secure in Taiwan, as opposed to the US or the UK where it’s just registering the design and it’s not necessarily effective in litigation. The UK has an advantage in that it’s so quick, just 10 days.

Table 1: Difference between Taiwan and UK’s design protection system; Source: TIPO patent examiner Hsu Ming-feng’s presentation at the 2017 International Symposium on Patent Strategy and Practice

The UK legislation also includes criminal penalties and it adopts some of the concept of trademarks and copyright. The idea of the unregistered design is quite interesting in comparison with Taiwan. It’s similar to copyright in that as soon as you’ve designed something you have the rights.

Table 2: Difference between Taiwan and UK’s design protection system; Source: TIPO patent examiner Hsu Ming-feng’s presentation at the 2017 International Symposium on Patent Strategy and Practice

The UK’s design applications rose by 20% in 2015, which the speaker attributed to two factors. One was the adoption of the e-filing system and the second was the introduction of criminal sanctions, giving more comprehensive protection.

Figure 2: Changes in the number of design applications at each office; Source: TIPO patent examiner Hsu Ming-feng’s presentation at the 2017 International Symposium on Patent Strategy and Practice

One point I thought was notable was that they advised against using a CAD 3D model in place of drawings.

IP Observer: Do you think that the different drafting standards in different countries make it impossible to “translate” patents?

Jay Kao: I don’t think that translation is a real problem. The problem is that you have to consider your US application when you’re applying for your Taiwan patent. So the issue is with definitions, in that the US is very particular on this point, so you have to write in more detail, whereas this isn’t necessary for the Taiwanese application.

IP Observer: How do you think Taiwan can address the fall in applications to TIPO?

Jay Kao: Taiwanese litigation is not very favorable to patent holders, as the compensation rate is quite low and they often lose. Patent rights are a tool to exclude competitors from using a certain invention, so Taiwanese businesses are naturally attracted to bigger markets.

Figure 3: Patent applications for the top 20 origins, 2015; Source: Professor Liu Kuo-tsan's presentation at the 2017 International Symposium on Patent Strategy and Practice

IP Observer: How can Taiwan compete in terms of innovation?

Jay Kao: I think it’s very hard to compare Taiwan with the US, because the US is so advanced in terms of technology. Much of the time they already have their patents in place before they launch their product, whereas in Taiwan, businesses generally apply for a patent when the product is just about to go on the market or they modify an existing product. I don’t necessarily think that the number of patents is that important. I think it’s more important to ensure that you’ve protected your core technique. I’ve come across certain companies that just apply for patents because they’ve designated a certain amount of money towards it in their budget. They’re not really interested in whether or not the patent will be effective. So they’ll ask for you to complete 100 patent applications in two months. That’s an impossible task. So you can have quantity but it’s not useful if they can’t be enforced. Just like in China. China has a lot of patent applications, but it doesn’t necessarily help industry there. In Taiwan when times were good, companies applied for patents, not necessarily useful patents, but now that times are harder, they’ve cut back on applications. They’re now only really applying for really important inventions and abandoning less important patent rights. I’ve come across this situation, wherein a firm has already applied for a patent, but on receipt of the first office action, they just give up on it, without drafting a response. This is largely a response to the economic hardships Taiwan industry is currently undergoing. There’s also the point that a lot of the products in Taiwan are already quite mature, so it’s quite hard to innovate without forging into a new form of technology.

IP Observer: Do you think there are many opportunities for Taiwanese patent firms in China?

Jay Kao: I’ve heard from other patent firms that it’s quite difficult for Taiwanese patent firms to succeed there, with one or two exceptions. They just can’t get their businesses off the ground there. Although we have a lot in common with China, I think they do things very differently. They don’t really obey the rules. I also don’t think that a Taiwanese firm operating in patent prosecution in China would be beneficial for their bottom line. So, although many Taiwanese patent attorneys also gain certification in China, they can’t file directly, so it’s really just of use for consultative purposes.

Author: Conor Stuart Current Post: Senior Editor, IP Observer Education: MA Taiwanese Literature, National Taiwan University BA Chinese and Spanish, Leeds University, UK Experience: Translator/Editor, Want China Times Editor, Erenlai Magazine

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