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

[ October 2009 ] >Back
Patent
   
Ⅰ.

Introduction III (to be continued) - main points of the amendment to the current Patent Act
   (1)  Article 45 (added)
   

No amendment should be made to the specification, claims and all necessary drawings which are written in a foreign language and filed under Article 25 III.

The Chinese translation thereof supplemented under Article 25 III shall not exceed the scope of contents which were disclosed in the foreign documents mentioned in the preceding paragraph. 

Under Article 25 III, the applicant may file a patent application with the specification, claims and all necessary drawings written in a foreign language first in order to obtain an earlier filing date or to meet the deadline for claiming priority, and then supplement the Chinese translation thereof prior to the date specified by the Patent Authority. When proceeding with the substantive examination, the Patent Authority will decide whether an amendment is required or whether the application can be patented based on the Chinese version translated from the foreign version as filed. The foreign version is mainly the document for obtaining the filing date and the base of Chinese translation, so no amendment shall be made thereto.
   (2) Article 50 (added)
   

A patent applicant may make an amendment to the specification, claims or drawings during the stage of re-examination.

When any amendment to be made under the preceding paragraph is because of receiving the rejection decision from the Patent Authority, the provisions set out in Article 44 V shall be applied, except that the rejection decision is deemed unreasonable after the re-examination.

The Patent Authority may directly issue the Final Notice when there is still a reason to deny the patentability of an invention patent through the re-examination procedure or amendment under the preceding paragraph or the amendment doesn’t conform to the provisions set out in Article 44 V. 

Under Article 44, an applicant is only allowed to make amendment to the specifications, claims and/or drawings within the time limit as specified in a notice given by the Patent Authority. However, it is not clear whether an applicant is allowed to do the same in the stage of re-examination. Therefore, this article is added to clarify this issue. 

When the amendment is made during the re-examination, Article 44 V shall still be applied too. It means the applicant can only make amendment(s) 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).
   (3)  Article 52 IV (added)
    When the confidential requirement of an approved invention is no longer necessary, the Patent Authority shall inform the applicant to pay the issue fee and the first year annuity within three (3) months after the service of the notice. The patent shall be published after the payment of the foregoing fees is made. If the foregoing fees have not been paid upon expiry of the given deadline, no publication shall be made.

The timing of being patented for an invention, which is necessary to be kept confidential, is different from that for an invention, which is unnecessary to be kept confidential. During the confidential period, an invention shall not have patent rights. Under the current Patent Act, payment of the issue fee and the first year annuity is the requirement to obtain patent rights. So, when the confidential requirement of an approved invention is no longer necessary, the applicant shall proceed with the required payment to obtain the patent rights.
   (4) Article 53 IV (added)
    If a patent applicant unintentionally fails to pay the fees described in the first Paragraph of this article upon expiry of the given deadline, he/she may pay the issue fee and the first year annuity in double within six (6) months after expiry of the given deadline to have the patent published.

The three-month period described in the first paragraph is regarded as the peremptory period in the current Patent Act and cannot be extended. In addition, failing to conduct the payment of issue fee and the first year annuity will cause disadvantage effect to the applicant. This kind of regulations may depart from the spirit to encourage inventions and creations by the same Act. Furthermore, other international regulations, such as PLT, EPC and PCT, have made some regulations to allow that the applicant who unintentionally fails to conduct the payment within the given deadline may apply for restoration to the status quo ante within a certain period, so this provision is added. However, when the failure of payment is caused by the occurrence of any event attributable to the applicant other than an act of God or any other event not attributable to the applicant, the first year annuity should be paid in double.
   (5) Article 54 III (added)
   

The pharmaceuticals described in the first Paragraph of this article do not extend to animal pharmaceuticals.

To ensure security and effectiveness, in the case of invention patents covering pharmaceuticals, agrichemicals, or processes for preparing the same, a prior government approval must be secured to practice such patents, and the processing generally takes a certain time. That is the reason why regulations ratifying extension to patent term are stipulated. It is thus clear that the pharmaceuticals to be protected by the Patent Act are those which can enhance human health and well-being but nothing to do with animals. 
   (6)  Article 55 (added)
    When a request for extension is permitted after the patent term expires, the term extension shall be deemed to have begun since the day next to the expiry of the patent term.

In the current Patent Act, it is not clear what the right is before an extension is permitted after the patent term expires. Therefore, the draft amendment adds this provision to specify it by making reference to the Japanese and Korean patent acts.
   (7)  Article 57 (added)
    The object of the extended patent term permitted by the Patent Authority shall be limited to the effective ingredients or use identified in the approval certificate.

When a patent term is permitted to extend by the Patent Authority, it does not mean the term for all claims thereof is permitted to extend. Only the claim(s) which is (are) corresponding to the effective ingredients or use identified in the approval certificate shall be approved to extend the patent term.
 
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)
Ⅱ.

The TIPO finally excluded the Contributory infringement legislation into the Patent Act draft amendment
 
        In our previous Newsletter of December 2008, we once introduced that the TIPO considered regulating the contributory infringement legislation into the Patent Act draft amendment and has invited scholars, experts, and the representatives in the judicial and industrial fields to join a public forum held on October 31, 2008 for particularly discussing and collecting public comments in this regard.

        Since the Intellectual Property Court has just started operation from July 1, 2008, and many of Taiwan’s industries are currently in a transformation phase, the TIPO thinks they had better proceed with this new provision after the IP Court accumulates sufficient experience from a greater number of relevant cases in the future. After an overall consideration, the TIPO finally decided not to include the contributory infringement legislation into the Patent Act draft amendment this time.
  Source: TIPO News dated August 06, 2009

(http://www.tipo.gov.tw/en/News_NewsContent.aspx?NewsID=3981)
Trademark
   
Ⅰ.

Important changes in the classifications of goods/services in September 2009.
        The TIPO published the amendments on the classification and descriptions of goods and services from time to time on the Trademark Gazettes. The following are the amendments on classifications of some goods published by the TIPO in September 2009.

No.

Original I.C.

Goods

I.C. moved to

1

I.C. 04

Anti oxidation oil

I.C. 02

2

I.C. 04

Transmission Fluid

I.C. 01

3

I.C. 04

Power transmission fluids

I.C. 01

4

I.C. 04

Carburetor cleaner

I.C. 01

5

I.C. 04

Engineer cleaner

I.C. 01

6

I.C. 04

Chemical preparations for decarburization

I.C. 01

7

I.C. 08

Hair curlers

I.C. 26

8

I.C. 16

Pins, safety pins

I.C. 26

9

I.C. 26

Brooches

I.C. 14

Source: TIPO Trademark Gazettes dated September 1 and 16, 2009
   
 Ⅱ. A judgment made by the Taipei High Administrative Court in 2007 (No.00994) concluded that two conditions must be simultaneously satisfied when applying to Article 23 I. (14) of the Trademark Act.
 


(The trademark at issue) (The trademark cited as the basis for opposition)

      When applying to the Article 23 I (14) of the Trademark Act, two conditions must be both satisfied. The first is that a trademark is identical or similar to a trademark that has been used earlier by another person on the identical or similar goods/services. The second is that the applicant thereof is aware of the existence of the said trademark through contractual, geographical, or business connections, or any other relationship with the said person.

      The so-called “trademark use” means the using status that a trademark associates with its designated goods/services. Thus, evidence of use showing the association status of a trademark and its designated goods/services is required to prove the fact of trademark use, such as a product on which a label of its trademark is stuck on.

      However, if a trademark registration cited as the basis for refusal of registration or for opposition/invalidation/cancellation has been cancelled, stricter interpretation on the admissibility of evidence shall be applied when identifying whether the cited trademark has been used earlier than the trademark at issue. 

      In the said case, the defendant (i.e. opponent in the TIPO) alleged their use of the trademark cited as the basis for opposition was earlier than the use of the trademark at issue. However, they failed to submit sufficient evidence to prove the fact of their use, i.e. the qualified status to use their trademark associated with its designated goods. 

      For example, the invoices with quantity and prices the defendant submitted only proved the sales of products but didn’t disclose how the cited trademark was used on the products sold. Thus, the invoices were insufficient evidence of use of the cited trademark. 

      Since all evidence submitted by the defendant (i.e. opponent in the TIPO) was unable to prove they did use the cited trademark on the designated goods, their assertion of earlier use than the trademark at issue was not accepted. Therefore, the allegation of Article 23 I (14) made by the defendant was unsuccessful finally.

Source: TIPO Chinese Newsletter dated September 5, 2009
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=3952)