JYUH DUNG PATENT & TRADEMARK OFFICE

JYUH DUNG INTERNATIONAL PATENT & TRADEMARK OFFICE
18F, NO. 95, SEC. 2, ROOSEVELT ROAD,
TAIPEI, TAIWAN.R.O.C.
TEL: 886-2-23620898
FAX: 886-2-23620865
Email: jdpatlaw@gmail.com
jdpatlaw@seed.net.tw

· Founded in 1988

· Location: Taipei City, Taiwan

· Services: Specialized in providing intellectual property consultation and services for domestic and foreign patent, trademark, copyright, etc.

· Customers: Hundreds and across many vertical industries.

Founded in 1988, and with more than 30 years of experience and customer success track records, JUYH DUNG is committed to provide the most personalized and value-driven services to help you safeguard your innovation and intellectual property and R&D investment.

We have a proven methodology that is simple and personalized:

1.Start with a free consultation session to understand your need and objective.

2.Explain in simplified languages to help you understand various options, cost benefits, pros and cons, etc. We will work with you as a partner to select the right and most cost effective option that will deliver the maximum protection to meet your objective.

3.Leverage our 30+ years of experience to help you apply the application and be granted the patent, trademark, and copyright in Taiwan.

4.Leverage the extensive international network of our partners in nearly 100 countries that we have established throughout our 30+ years of history to help you accelerate being granted the patent and trademark rights internationally.

JYUH DUNG International Patent, Trademark & Law Office provides all-inclusive intellectual property law practices and services related to patent, trademark, etc., to its local customers in Taiwan and foreign clients.
 

Our patent application related services ranges from drafting, applying, and prosecuting new utility model patent application and new design patent application, etc., in two scope options:

1.Taiwan/Domestic

2.International PCT

Through the international PCT vehicle, we can help you take the advantage of submitting one application and enjoy the convenience of securing patent approval from an array of participating countries including US, Japan, EPO, Russia, China, South Korea, Brazil, Colombia, Australia, India, Canada, Eurasia and worldwide.

We understand at times you must take actions to stop illegal actions that infringe your intellect property rights. Should the need arises, our office is also specialized in servicing your patent and trademark litigation needs. Our intellectual property professionals and service managers along with skilled support personnel can provide you with the most relevant assessment, and guide you through the journey to make the most sensible decisions.

Below is a more detailed illustration of our services to help our clients capture and safeguard the value of their intellectual property through securing patent, trademark, copyright, and trade secret protection to the maximum extent possible.

1.Take the burden off you and eliminate confusion by leveraging our 30+ years of professional expertise to handle and service applications and relief procedures for patent, trademark, copyright in Taiwan, and nearly 100 countries in continents such as America, Europe, Africa.

2.We will walk you through the journey by leveraging our specialized expertise in handling the application, official actions, retrieval, analysis, infringement elimination, and counterfeiting of domestic and foreign patents.

3.Guide you through the process and decision makings should you need to respond to infringement and counterfeiting. We are specialized in the identification, registration, infringement exclusion, analysis and counterfeiting of domestic and foreign trademarks.

4.We make it easy for you when you need to maintain, evolve, or change the ownership of your intellectual property assets through our expert familiarity in in procedures for transfer, authorization, transfer and relief of patents and trademarks in Taiwan and abroad.

5.Perform perennial update and consultation of Intellectual Property Rights of Patent and Trademarks as well as assessment and review on impact to your intellectual property portfolio.

6.Leverage our expertise in Taiwan and extensive network in nearly 100 countries to assist you in patent investment, planning, trading globally.

● Patent Services

1. Application for invention, new type or design patent.

2. Patent authorization, implementation, assignment, and other patent related matters.

3. Patent objection, filing, defense and other disputes.

4. Administrative relief procedures such as patent appeals and administrative litigation.

5. Management of annual patent management fees.

1. Application for trademark registration.

2. Pre-trademark search.

3. Trademark transfer, authorization, extension, and other procedures.

4. Trademark objection, evaluation, repeal, and defense.

5. Trademark appeals, administrative litigation, and other

6. administrative relief procedures.

7. LOGO design.

1. Handling of infringement of patents and trademarks including investigation, prosecution, notification, and removal of infringement damages, etc.

2. Preparation of cooperation agreement for patent, trademark and copyright.

3. Prepare and send official notice to relevant parties related to, but not limited to, infringement and cooperation matters described above.

1.Applications and pre-search services of foreign patents and trademarks.

2.Handling of relief procedures for foreign patents, trademarks and copyrights.

3.Handling of infringement of foreign patents and trademarks including investigation, prosecution, notification, and removal of infringement

damages, etc.

4.Consulting on foreign patents, trademarks and copyrights.

services related to intellectual property.

1.Patent granting in Taiwan is based on the priority date, i.e. the date the patent application was filed. In the event that if there are more than two patent applications were filed for the same invention, the application with the earliest filing date will have the priority to be granted the patent.

2.However, this limitation shall not apply if the subsequent applicant can raise objection and provide proof of an earlier application filing date than the application date of the prior applicant.

3.Unless there is a specific reason why an invention patent application shall not be disclosed publicly, all new invention patent shall be made public after the date of application (or the day after the priority date) on the website of the Intellectual Property Bureau of Taiwan for 18 months from the date of application (or the day after the priority date).

4.Entity examination system for invention patent: within three years from the date of application for an invention patent, either the applicant or any person may submit a request to the Patent Authority to perform entity examination. If no request was received within 3 years from the date of application, the application will be rescinded.

5.Since July 1, 1993, a utility model patent application in Taiwan does not require to conduct a substantive examination and only requires a formal examination. Therefore, a utility model patent generally may be obtained within 4 to 6 months of filing.

6.The granting of a Utility Model Patent application in Taiwan is subject to a formal examination and requires neither to conduct a substantive examination, or a pre-case search, nor the judgment of whether the Utility Model application meets the entity requirements be made. Since the right has not been determined, in order to prevent the patentee from issuing patent infringement warning letters arbitrarily, it is advised that issuance of any such warning shall include a copy of the Utility Model technology report to facilitate objective judgment. However, it is the prerequisite before a lawsuit can be filed.

● After the approval and announcement of a Utility Model patent application, any person may apply to the patent authority to receive a copy of the Utility Model technology report to examine and evaluate the progressiveness, novelty, the priority date based approval principle, etc. (Article 105, paragraph 1 of the patent law.)

● When exercising the Utility Model patent right, no warning shall be issued if a copy of the Utility Model technology report was not provided together with the warning. (Article 116 of the patent law)

1. The protection system of China for inventions and patents focuses on protecting the product structure, method or the improved technology.

2. Applications will be published after 18 months from the date of filing, i.e. the priority date, the invention will subject to substantive examination.

3. Within three years from the date of filing for an invention patent, the applicant or any person may apply to the patent authority for substantive entity examination or review. If no application has been submitted to put forward a substantive examination, the application will be deemed to have been withdrawn. If an invention application is approved, it will be awarded the patent rights for 20 years from the date of filing.

4. When determining the patent priority, the China patent authority adopts the system to be based on the date of filing. If there are more than two patent applications filed for the same invention, the application with an earlier filing date will receive the priority.

5. However, the applicant of a subsequent application for the same invention could raise claims to prove that he/she should have an earlier application date than the application date of the prior applicant.

1. For the protection of a Utility model patent, China patent system protects the form, the structure, or the utilization of improved technology of the articles.

The examination procedure for approval will be based on a formal examination of illustrations and information provided, i.e. no substantive examination would be required. A preliminary examination shall be conducted to determine novelty, practicability, and whether the applicant has the earliest filing date.

2. For the Utility Model patent, China adopts the "The earliest application date” principle. Therefore, if you are planning to apply for a Utility Model patent in China, you should file the application the earliest possible.

3. For the Utility Model patent in China, one may submit a request for a "Patent Grant Evaluation Report" to examine the patent granted.

4. Submitting simultaneous applications for both the invention patent and the utility model patent:

If preferred, an applicant could, on the same day, file applications for both the patent for invention and the patent for utility model. For such case, in general, the utility model patent application could be approved before the patent for invention, so that the applicant can obtain protection first based on the approved patent for utility model.

However, before the patent for invention can be approved, the China Patent Office will notify the applicant to declare the abandonment of the utility model patent within the time limit before the examination of the invention patent is approved. If the applicant does not agree to declare and abandon the utility model patent, or does not reply before the expiration date for the abandonment, the invention patent will not be granted.

1. For the protection of a Design patent, China patent system protects the combination of the form, the pattern, the color and the shape to create the new Design in the aesthetic and suitability for new practical usages and purposes of the new design.

2. Patent of appearance design review form, after preliminary examination (novelty, beauty, and whether the first application) through the granted patent, patent of appearance design rights during the ten years from the date of filing.

3. The examination procedure for a Design patent approval will be based on the examination of illustrations and forms provided, i.e. no substantive examination would be required.

4. A preliminary examination shall be conducted to determine the novelty, beauty, etc., and whether the applicant has the earliest filing date, before a Design patent will be granted. Once granted, a Design patent will last for 10 years.

5. For the Design patent, China adopts the "The earliest application date” principle. Therefore, if you are planning to apply for a Design patent in China, you should file the application the earliest possible.

1. The U.S. Patent system protects a Utility patent based on unique and original improvements to a product’s structure, method, or enhanced technology.

Applications will be published after 18 months from the date of filing, i.e. the priority date, and the invention will subject to substantive examination.

Once a U.S. Utility Patent application is approved, it will be in effect for 20 years from the date of filing.

2. When determining the patent priority, the U.S. Patent system gives priority to the application with the earliest date of filing. This means if there are more than two patent applications filed for the same invention, the application with an earlier filing date will receive the priority.

However, the applicant of a subsequent application for the same invention could raise claims to prove that he/she should be given the earliest application date determination than the application date of the prior applicant.

1.The U.S. Plant Patent refers to granting the patent to an inventor (or the heir to the inventor or assignee) for any new inventions or discoveries that enable the reproduction of new plant variety by leveraging the asexual reproduction methods. Such Plant patent shall not include the new Plant varieties produced through tuber propagation of plants not produced from the ‘uncultivated state’ environment.

Once a Plant patent is granted, the duration of the patent shall expire twenty (20) years from the date of filing.

2.Plants subject to this patent protection are limited to:

● It must be a living plant organism, characterized by a single or genotype combination of genes and reproduced asexually, but not through "making" or "manufacturing".

● Include sport, mutant, hybrid and gm plants; Varieties and mutants may be generated spontaneously or by mutagenesis: hybrids may be natural or produced from breeding programs or somaticin source cells. Plant mutants may be produced naturally, but they must be found in the cultivated area to meet the requirements for granting a plant patent.

● algae and macrofungi are regarded as plants, but fine bacteria are not.

3.Provisions and restrictions for plant patents:

Based on 35 u. S.C 161, for any new plant varieties to be granted the plant patent must provide stability, in asexual reproduction, and can not be plants such as potatoes or other edible tuber propagation of plants, i.e. any invention or discovery, and reproduction in asexual reproduction of any plant variety of the most distinctive and novel, contains the cultivation of varieties, mutations, hybrid and newly discovered the west (seedlings), but does not include in tuber plant breeding, or found in the condition of the cultivation of plants, must, in accordance with this law (revised in 1954 on September 3, 68 stat. 1190) formulated by the Conditions and requirements patented.

1. A U.S. Design Patent protects the combination of a product’s form, the pattern, the color and the shape to create the new Design in the aesthetic and suitability for new practical usages and purposes of the new design, i.e. examining the appearance, or form, or shape of the objects, or surface decoration items, or combinations of items and their construction and surface decoration, etc.

2. A U.S. Design patent is subject to substantive examination, after preliminary examination of novelty, beauty, and whether the application has the earliest filing date, etc.

Once a U.S. Design patent is granted, it will remain effective for 14 years from the date of filing.

1. Large-Entity: If the applicant is an enterprise (company) with total number of employees (including all parent and subsidiary companies) exceeds 500.

2. Small-Entity: The applicant is an individual or a business enterprise whose total number of employees is less than 500 (including all parent and subsidiary companies). A non-profit organization is also deemed as a Small-Entity.

3. Micro-Entity: An individual or a small business enterprise and that the inventor and the applicant meet all of the following requirements:

a) Have not filed for more than 4 U.S. patent applications.

b) Their pre-tax annual income or annual business revenues are lower than 3 times of the annual household income of a middle-class family based on the statistics announced by the U.S. government.

Patents granted to Micro-Entity cannot be transferred or authorized to other parties.

1. The invention patent as defined by European Patent Office (EPO) requires substantive examination. The applicant will receive a novelty investigation report within six to eight months after the filing date of the application. The applicant can decide whether to move forward with an substantive examination based on the assessment of the novelty investigation report. The application for the invention Patent (EPO) shall be made public in the early stage. The content of the application will be made public on the European Patent Office web site after 18 months from the date of filing for an application.

2. The deadline for the applicant to submit a request for substantive examination shall be within six months after the public announcement of the application and the designated official fees shall be paid. Upon approval, the invention patent certificate shall be issued and the applicant can decide at such time which country or countries the certificate shall cover and pay for the certificate issuance fees accordingly.

3. The invention patent application (EPO) process is conducted in one of the three official EPO languages: English, French and German.

France, Germany, Belgium, Switzerland, Sweden, Luxembourg, Italy, Austria, Hungary, Spain, Portugal, Denmark, Finland, the Netherlands, Greece, Iceland, Liechtenstein, Ireland, Monaco, Turkey, Bulgaria, Poland, Romania, the Czech republic, Estonia, Lithuania, Slovakia, Latvia, Slovenia and Cyprus, Norway, Malta, a total of 32 countries (UK has to take off the Euro).

Extended countries: Albania, Croatia, Macedonia, Bosnia and

Herzegovina, Serbia, Montenegro, a total of 6 countries.

The European Design application (RCD) approval will be subject to a formal examination of illustrations and information provided. Neither substantive examination nor a preliminary examination to determine the novelty, etc., would be required.

Applications can be submitted within 12 months from the date of the product was launched in the market.

After UK left the EU, currently an Euro registered design are protected in 27 Euro member states include: France, Germany, Belgium, Luxembourg, Sweden, Denmark, Finland, Spain, Portugal, Austria, Italy, the Netherlands, Ireland, Greece, Hungary, Poland, the Czech republic, Romania, Estonia, Lithuania, Bulgaria, Latvia, Slovakia, Slovenia and Cyprus and Malta, Croatia.

1. The trademark application in Taiwan refers to the registration of protection. The applicant will submit a trademark registration application to the Bureau of Intellectual Property.

Average Application Review and Examination time: about 8-12 months. Authorized exclusive use period for the trademark right after approval 10 years from the date of registration. The authorized period can be renewed for 10 more years at the end of each 10 year

• "Trademark"
• "Certification mark"
• "Group trademark"
• "Group mark"        

1. Trademark: A distinctive mark, design or text that, in the course of business or transaction, is used to enable consumers to recognize the source of the indicated goods or services and to distinguish them from the goods or services offered by others without being confused.

2. Certification marks - Certification Marks used to distinguish the owner of the certification marks certifying the specific quality, precision, materials, manufacturing methods, origin or other items from another person's goods or services.

There are "general certification marks" and "certificate of origin marks". Registration by a certifying corporation, body or government agency to distinguish it from uncertified goods or services.

3. Group trademark - A Group trademark is a mark used by an organization, an association, or other body as a legal person to indicate the goods or services provided by its members and to distinguish them from those provided by non-members of that body.

4. Group mark - Group mark refers to the logo of a legal entity, an Group or other body having the status of a legal person to recognize the membership of its members and to distinguish it from members from other bodies. The corporate logo is used to recognize the membership of a particular organization and to inform the public that the user of the corporate logo is Group with the organization.

Traditionally, a trademark in Taiwan can be designed to consist traditional text, graphics and symbols. Since 2012, the Bureau of Intellectual Property has allowed the registration of non-traditional trademarks, which can now include color, three-dimensional shape, sound, dynamic, hologram, smell, touch, taste and other forms. As long as it has the function of identifying the source, it may become a trademark.

1. China adopts the principle of registration and protection for trademarks. The applicant applies to the China trademark office of the Intellectual Property Office of the People's Republic of China for registration.

2. The trademark examination in China adopts both the "formal examination" and "substantive examination". The trademark shall be identifiable and conform to the relevant provisions of the trademark law.

3. After the China trademark office has examined and approved the Publication of the application for a trademark in China, the objection period shall be three months from the date of the Publication. Any person or interested party may file an objection within the objection period. When the period of public announcement expires and there is no objection, the China trademark office will approve the registration.

4. The right to the exclusive use of a trademark in China shall be 10 years from the date of approval and registration, and the right to exclusive use of a trademark may be renewal 12 months prior to the expiration of the period. The duration of each renewal shall be 10 years.

5. The types of trademarks in China include trademarks, certification marks, and collective trademarks.

Applicant's identification document

• If the applicant is an individual, please provide a copy of identity card)
• If the applicant is a business entity, please provide copies of company information such as company registration and certificates.
• Name and address of the applicant.
• Trademark design and/or device.
• Category of application and goods/services.
• Power of Attorney for the application if applicable.

Trademarks in the United States are governed by the United States Patent and Trademark Office (USPTO). Unlike most countries, trademark applications in the United States are approved based on the ‘First to Use’ policy, so it is important to provide evidence of a trademark being used before filing the application or during the application process.

Here are a few key facts to know about applying trademarks in the United States:

1.There are two ways to apply for trademark in the United States

a) If the applicant has already used the trademark in commercial activities, he/she may file a trademark application based on the fact of such use.

b) The applicant has not yet used the logo, but plans to file and use the trademark in the United States.

2.For scenario (a) described above, the applicant has actually already used the trademark in the commercial activities before the trademark application. Trademark applications made based on this case, i.e. the trademark has been used in commercial activities before filing the trademark application, the time needed for the trademark examination and receiving approval may be shortened, and the cost will be lower and the registration of the trademark will be relatively easy.

3.For scenario (b) described above, the applicant has not actually used the trademark in commercial activities in the United States before filing for the trademark application, but plans to apply for and use the trademark in the United States. In this case, the cost will be higher, and the examination time may be longer, as the examination standard is stricter.

4.Upon approval of a trademark application, the United States Patent and Trademark Office (USPTO) will issue a notice of approval and publish it in the USPTO’s Office Gazette. Within 3 months from the day of the publication by USPTO on the approval of a trademark, anyone can raise doubts or objections to the approved trademark. If USPTO received no objection from anyone upon the expiration of the 3 months publication period, the USPTO will issue a notice of approval and issue a certificate.

5.The United States trademark law requires the trademark owner to file an affidavit and use evidence to maintain the registration of a trademark five years from the date of the first registration.

6.The right to exclusive use of a trademark in the United States shall be 10 years from the date of filing. To maintain the right to exclusive use of a trademark, application shall be submitted to renew the trademark 6 months prior to the expiration of the 10-year period. Each renewal period shall extend the exclusive use of a trademark by 10 years.

The following are a few key facts you need to know when applying for a trademark for the European Union (EU) market:

1.Community Trade Mark (CTM).

A Community Trade Mark (CTM) is a trademark applicable for the 27 member states of the EU.

An application for CTM is examined and approved by the European Trademark Office (OHIM), that is, a CTM will directly obtain the protection of the trademark right in all 27 member states in the EU.

The list of the 27 member states is as follows:

France, Germany, Belgium, Sweden, Austria, Spain, Portugal, Denmark, the Netherlands, Finland, Greece, Italy, Luxembourg, Ireland, Hungary, Poland, the Czech republic, Romania, Estonia, Lithuania, Bulgaria, Latvia, Slovakia, Slovenia, Cyprus, Malta, and the Croatian, a total of 27 members. Please note that United Kingdom (UK) is no longer part of the European Union community and a CTM trademark is no longer protected in UK.

2.Once a CTM trademark application is approved, the right to the exclusive use of a CTM trademark shall be 10 years from the date of filing. At the end of 10 years, the right to the exclusive use of a trademark may be extended before the expiration of the 10-year period. The duration of each extension shall be 10 years.

3.CTM shall be subjected to formal examination and absolute examination. After the application is filed, the trademark office of the European Union (OHIM) shall automatically carry out formal examination of the application documents and the designated goods/services and their classification. If the application documents are incomplete or the specified goods/services and classification are incorrect, corrections must be made and provided to OHIM within the specified time limited designated by OHIM. After passing the formal examination, an absolute examination shall be conducted to examine whether the trademark is distinctive and complies with the provisions of the trademark law.

4.A key advantage of applying for a European Union trademark (CTM) is that the application fee for the European Union trademark (CTM) is much less than if one has to apply for trademarks individually throughout the 27 member states of the European Union.

5.Once an European Union trademark (CTM) is approved, it shall be protected directly in all member states of the European Union.

6.The use of an approved European Union trademark (CTM) in any member state shall be deemed to have been used in all member states. Therefore, a CTM trademark registration will not be revoked due to violation of the provisions of trademark law because it is not yet used in a particular member state.