Interview: International Symposium on Patent Strategy and Practice
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.
Figure 1: NAIP patent attorney Jay Kao
Photo by Conor Stuart
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.【unfinished; for further reading: IP Observer 012: Interview: International Symposium on Patent Strategy and Practice】
一帶一路 （B&R） 泛指「絲綢之路經濟帶」和「21世紀海上絲綢之路」（ "the Belt and Road, B&R" refers to the "Silk Road Economic Belt" and the "21st Century Maritime Silk Road，OBOR），該倡議將涵蓋26個國家及地區44億人口，預計產生21萬億美元的經濟成果，分別約占全球總量之62.5%及29.5%，堪稱全世界最長的經濟走廊。
值得注意的是 ，針對一帶一路之英譯爭議，中國大陸的國家發展和改革委員會同其外交部、商務部等部門，對「一帶一路」英文譯法進行了統一的規範，減少坊間對一帶一路英譯的落差。在對外公文中，統一將 「絲綢之路經濟帶和21世紀海上絲綢之路」的英文全稱譯為「the Silk Road Economic Belt and the 21st-Century Maritime Silk Road」，「一帶一路」簡稱譯為「the Belt and Road」，英文縮寫用「B&R」。
由於NPE大多的策略都是以戰逼和，也就是以訴訟的法律風險逼迫廠商付出高額和解金，因此最有效的回擊策略就是拉長戰線，逼迫對方陷入訴訟當中。陳碧莉舉例，台積電曾經被一家NPE在美國麻州的法院提告，但經過研究後，發覺這家NPE的註冊地在德拉瓦州，於是台積電立刻在德拉瓦州的法院請求移轉管轄權（Decision on Jurisdiction），並且獲得成功。「我們這個程序一完成，對方就放棄接下來的動作了，因為他們根本沒有要打官司，只是想賺錢，」她也建議，如果發覺對方的專利有瑕疵時，也可以直接向美國專利商標局（USPTO）提起專利多方複審（Inter Partes Review, IPR），也同樣能有嚇阻的作用。
