JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

The present status of Accelerated Examination of Patent applications (AEP) in Taiwan

[ August 2009 ] >Back

Patent

Ⅰ.

The present status of Accelerated Examination of Patent applications (AEP) in Taiwan.

The Accelerated Examination of Patent applications (AEP) was launched on January 1, 2009 and has developed its own new set of procedures. Until June 30, 2009, 218 patent applications have filed the requests of the AEP. The related statistics are as follows:

Domestic or foreign applicants	Number of AEP
Domestic applicants	80
Foreign applicants	138

Top four countries of foreign applicants	Number of AEP
USA	36
Japan	30
Germany	15
Singapore	14

Top four countries of the corresponding foreign patents which were submitted as references for the AEP	% of number of AEP
USA	52 %
Europe	13%
Japan, China	10%
Korea	7%

The top five technical fields of the patent applications which requested for the AEP	Number of AEP
Electricity, measuring, lighting and storage apparatus	33
Machinery	28
Human necessities	25
Photoelectric and liquid crystal	23
Semiconductor	23

In average, it takes about 41.7 working days from filing the requests of AEP to receive the examiners’ official actions or notices of allowance. Until June 30, 2009, 109 patent applications received the official actions or notices of allowance after going through the procedures of AEP.

Jaw-Hwa is pleased to offer you more detailed information about the request of AEP upon receiving your request.

Source: TIPO Chinese Announcement dated July 17, 2009
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=3847)

Ⅱ.

Introduction II (to be continued) - main points of the amendment to the current Patent Act

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.

(1)

Article 25 (amended)

The application for an invention patent shall be made by the person entitled to file the patent application by submitting to the Patent Authority an application, a specification, claims, abstract and necessary drawings.
The filing date of the invention patent application shall be the day on which the application, the specification, claims and necessary drawings are fully submitted.
Where the specification, claims and all necessary drawings submitted under the preceding Paragraph are written in a foreign language but not in Chinese when filing, and the Chinese translation thereof has been supplemented prior to date specified by the Patent Authority, the date on which the foreign language version of such documents are submitted shall be regarded as the filing date of such patent application.
Failure to submit the Chinese translation thereof by or on the specified date shall cause the patent application to be dismissed provided, however, that if the Chinese translation has been supplemented prior to the execution of the dismissal, the date on which the Chinese translation is submitted shall be regarded as the filing date. The foreign language version will be deemed never submitted.
The rules about the “foreign language version” shall be prescribed by the Competent Authority.

Remark 1: The “specification” mentioned in current articles of the Patent Act includes “specification, claims and abstract”. In the amendment, “claims” and “abstract” are separated from the “specification” in order to avoid confusion and to comply with the international trend.
Remark 2: The Assignment form signed by the inventors will be no longer required.
Remark 3: At present, the applicants are allowed to submit the specification and all necessary drawings under the preceding Paragraph written in any kinds of foreign languages in order to obtain a filing date. However, it will cause trouble for the examiners when they need to check whether the amendment of the corresponding Chinese translation thereof exceeds the scope of the specification in a foreign language. Therefore, the TIPO is going to restrict the kinds of foreign languages of the specifications to certain ones in view of that many countries, such as Japan, also make restriction on the kinds of foreign languages.

(2)

Article 29 II & IV (amended)

The applicant shall, within sixteen (16) months from the filing date of the 1^st priority date, submit the documents issued by the government of the foreign country declared in the preceding Paragraph evidencing the acceptance of said foreign application.
If the applicants fail to claim priority when filing by chance, they still can file a written application for retrieving the priority with payment of the official fee and supplement the certified priority document within sixteen (16) months from the filing date of the 1^st priority date.

(3)

Article 32 (added)

Where an invention patent application and a utility model patent application in respect of the same invention or creation are filed separately on the same day by the same applicant, when the utility model patent has registered as a patent before the allowance of the invention patent application, the Patent Authority shall notify the applicant to select one of such applications for filing within a given time limit; and failure of the applicant to select within the time limit shall cause the dismissal of the invention patent application.
If the Invention patent application is selected, the patent right granted to the Utility Model shall not exist ab initio.
The invention patent application shall not be patented if the corresponding Utility Model patent right has extinguished ipso facto or become irrevocable before the invention patent application receives an examination decision.

(4)

Article 34 II~IV (amended)

The divisional applications set forth in the preceding Paragraph shall be filed:
A. before the re-examination decision on the original application is rendered.
B. within 30 days after receiving the notice of allowance for the original application. It is not applied if the original application is allowed after going through re-examination.
If divisional applications are accepted, the filing date of the original application shall still be taken as the filing date of the divisional applications, and the applicant shall remain entitled to claim priority.
A divisional application can not exceed the scope of the specification, claims or drawings of the original application.

(5)

Article 44 (amended)

In the course of examining an invention patent application, unless otherwise provided for in this Act, the Patent Authority may, upon a request or ex officio, notify a patent applicant to make an amendment to the specifications, claims and/or drawings within a specified time limit.

The contents of the amendment, unless the correction of the wrong translation, shall not exceed the scope of the specifications, claims or drawings disclosed in the original patent application.

The correction of the wrong translation shall not exceed the scope disclosed in the original foreign version when filing.
The applicant shall make amendment only within the time limit as specified in a notice given by the Patent Authority according to the Article 47II.
When receiving the Final Notice of Amendment from the Patent Authority, the applicant can make amendment(s) only within the time limit as specified in a notice given by the Patent Authority in respect of the following matters:

(A) Deleting the claims;
(B) Narrowing the scope of the claims;
(C) Correction of the error(s) made in the specification; or
(D) Explanation of obscure description(s).

Remark 1: The draft of amendments deletes the original 2^nd and 3^rd items in this Article to no longer set the time limitation for making voluntary amendments before receiving the formal rejection or notice of allowance for a patent application.

We will continue introducing main points of the amendment in succession in our Newsletter issued in the following months.

(Source: TIPO Chinese Newsletter dated June 05, 2009)

Trademark

Ⅰ.	The trademark right of a well-known mark should not be extended to other trademarks which have been used earlier by others.
	For the legal case of the above two trademarks published in the Taipei High Administrative Court in 2006 (No. 04147), the registrant of “NIKE” trademark alleged that “BioNike” mark is similar to “NIKE” and violates the Trademark Act, Article 23.I(12): “One that is identical or similar to another person's well-known trademark or mark and hence is likely to confuse the relevant public or likely to dilute the distinctiveness or reputation of the said well-known trademark or mark.” However, the Judge deemed that (1) two marks are not similar to each other, (2) the designated goods of “BioNike” mark are “cosmetics” which are not in the same or similar business fields of “NIKE” mark, (3) according to the evidence as provided, the “BioNike” mark was first used on “cosmetics” products in 1960 and was registered in Italy in 1963 which were earlier than 1971 when the “NIKE” mark was first used in the market. Therefore, it could not declare that the registrant of “BioNike” intended to imitate “NIKE” mark and to make the consumers become confusion in the market by taking the advantage of the well-known “NIKE” mark. Further, the existence of “BioNike” mark would not dilute the distinctiveness or reputation of the said well-known trademark. The registrant of “NIKE” also alleged that the trademark right of a well-known mark shall not be limited in the same or similar goods/ services only. However, as clearly stipulated in Article 30.I(3) of the Trademark Act, *the purpose of the protection of a well-known mark is not to let it extend the trademark right to other marks which are used prior to the well-known marks and are continually using in the market.* *Source: TIPO Chinese Newsletter dated August 5, 2009* (http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=3884)

Ⅱ.	The confusion of “concept” of trademarks should be the direct influence but not an indirect one.
	According to the legal case of the above two trademarks published in the Taipei High Administrative Court in 2006 (No. 02085), the “jxy JuXiangYuan Since1918 & device” mark was deemed dissimilar to “咀香園餅家及圖CHUI HEUNG YUEN BAKERY” mark. Although the registrant of the “jxy JuXiangYuan Since1918 & device” mark alleged that the Cantonese pronunciation of “JuXiangYuan” is similar to” CHUI HEUNG YUEN” but in different spelling only, the Judge held the opinion that the confusion of “concept” of trademarks should be the direct influence but not an indirect one. For this case, the consumers would not be confused by the images of two trademarks no matter how they are pronounced. *Source: TIPO Chinese Newsletter dated July 5, 2009* (http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=3833)