A private document should not always be negated to be available evidence in a dispute or litigation.

In an administrative litigation for a patent invalidation case, the plaintiff, also the proprietor of the patent at issue, argued that “annex 2”, submitted by the counterpart as supporting evidence to the invalidation against his patent, is a photocopy of private document, so annex 2 is not the available evidence and should not be adopted to invalid his patent before it is proved genuine first.

According to the Criteria of Patent Examining Procedure, a private document shall have substantive probative force and be adopted as the available evidence in an invalidation application when it is proved to be genuine and the contents thereof are relevant to the facts to be proved and are credible. For example, a private certificate, a photo of object, a design drawing or a video can be adopted as available evidence if it is supported by an invoice, an import/export declaration or an export license, etc. on which there is a date and certain relevance existing among them.

In that case, although annex 2 is a private document made by the counterpart internally, annex 5 is a copy of import declarations with seal of the Customs, regarding as official documents, and product numbers and model numbers in annex 2 to 6 are identical, so annex 2 has substantive probative force and can be adopted as the available evidence.

Source: TIPO Chinese Newsletter dated June 05, 2009 (http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=3760)

The TIPO is proceeding with an overall amendment to the current Patent Act. Since there will be a big change, from February this year, the TIPO has held several public hearings/forums to extensively collect comments to the proposed amendment. We introduce herewith five (5) main points of the amendment to the current Patent Act according to the publication by the TIPO.

Where the right to apply for patent is owned jointly by two or more persons, no joint-owner may assign or abandon his/her share therein without advance consent from all joint-owners.

Where the right to apply for patent is owned jointly by two or more persons, the share abandoned by one joint-owner should belong to all the other joint-owners.

The original article stipulates where an invention is created as a result of research or experiment, it should be free from the restrictive conditions set forth in the preceding paragraph, i.e. prior to applying for patent, an invention has been published or put to public use or has become known to the public, if it has been filed within six months from the date of occurrence of fact in the preceding paragraph. In the amendment, the result of “research” is no longer included because an invention even hasn’t been finished at the stage of research.

Checking the WTO member list would help you know in which country priority claim is available for your IP applications.

In the past, it is not allowed to designate “wholesale” services in any fields but only “retail store services” can be accepted in I.C. 35. We are glad to see the TIPO has finally been up to world standards.

They published the amendments to the description of services in I.C. 35 in the Manual of Acceptable Identification Goods and Services to include “wholesale” services into I.C. 35 in addition to “retail store services”. Therefore, it is now acceptable to designate, including but not limited to “wholesale and retail store services” featuring clothing, jewelry, beverages, furniture, hardware, articles for daily use and pharmaceutical preparations, etc. in I.C. 35

Source: TIPO publication in gazette dated April 16, 2009

There is sometimes a case that the owner of a prior trademark registration has a weaker position in the market while the owner of a posterior trademark registration is very famous in the same market. Relevant consumers may misunderstand the products offered by the owner of the prior trademark registration coming from the owner of the posterior trademark registration. Then, it may result in making the prior trademark registration lose its value and obstacle the prior registration to enter a new market. This is so-called “reverse confusion”. This kind of situation will not only confuse the relevant customers, but also cause the owner of a posterior trademark registration to take the responsibility for the damage of infringing the right of the prior trademark registration.

Therefore, according to the judgment No.01184 made by the Taipei High Administrative Court, although a well-known trademark enjoys broader protection, when it is filed in Taiwan for registration, a prior registration, which is very similar to the well-known trademark and designated very similar goods, will still bar the well-known trademark from registration due to Article 23 (13) of the Trademark Act unless the applicant of the well-known trademark is able to submit sufficient evidence to prove that the registration of the well-known trademark will not be likely to cause confusion to relevant consumers.

 
Source: TIPO Chinese Newsletter dated June 05, 2009 (http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=3761)