JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

The official fees for patent procedures will be adjusted

[ December 2009 ] >Back

Patent

Ⅰ.

The official fees for patent procedures will be adjusted

The official fees for patent procedures in Taiwan have been remained unchanged since the last adjustment on July 1, 2004, although the costs are increasing during these years. Referring to the information of the USPTO, JPO, EPO, KIPO and SIPO, they have charged official fees for substantive examination by the number of claims for years. The TIPO, therefore, plans to adjust the official fees according to the actual costs in the TIPO and the information of the other countries. On another note, the applicants are allowed to withdraw their patent applications with the refund of the official fees for substantive examination under some specific conditions. Furthermore, in order to reduce the applicants’ burden, some annuities are reduced.

The proposal of the main adjustments of the official fees for patent procedures will be as follows. Please be assured that we will keep you informed when the said adjustments become effective.

Items

Present

Proposal of adjustment

The request of the substantive examination

(1) Basic fee for the first fifty(50) pages of the specification and drawings: NT$8000

* Regardless of the number of the claims.

(1) Basic fee for the first fifty(50) pages of the specification and drawings within ten (10) claims : NT$8000

Fee for each additional claim in excess of the basic ten(10) claims: NT$800.

The annuities of Invention patents (Each Year)

7^th ~ 9^th Year: NT$9,000

10^th ~ 20^th Year: NT$18,000

7^th ~ 9^th Year: NT$8,000

10^th ~ 20^th Year: NT$16,000

The annuities of Utility Model patents

(Each Year)

4^th ~ 6^th Year: NT$5,000

7^th ~9^th Year: NT$9,000

10^thyear: NT$18,000

4^th ~ 6^th Year: NT$4,000

7^th ~ 10^th Year: NT$8,000

The annuities of Design patents (Each Year)

4^th ~ 6^th Year: NT$5,000

7^th ~9^th Year: NT$9,000

10^th ~12^th Year:NT$18,000

4^th ~ 6^th Year: NT$3,500

7^th ~ 12^th Year: NT$5,000

(Source: TIPO Chinese Newsletter dated November 5, 2009)

Ⅱ.

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

The Patent Act draft amendment made by the TIPO has been submitted to the Ministry of Economic Affairs (the MOEA) for review and evaluation on August 3, 2009. In our former issues of Newsletters, we have introduced some main points of the amendment to the current Patent Act and are pleased to continually introduce the other five (5) main points as follows:

(1)

Article 64 II & III (added)

The assignment, trust or licensing made by the patentee of the patent right of an invention to another person to practice the invention, or the pledge created on the patent by the patentee shall not be asserted against any third party, unless it has been registered with the Patent Authority.

The licensing as set forth in the preceding Paragraph could be exclusive licensing or non-exclusive licensing.

A licensee of the exclusive licensing, within the scope of the licensing of the patent, can exclude the patentee or third party from putting the patent into practice. If, however, there is an agreement providing otherwise, such agreement shall govern.

(2)

Article 66 (added)

The exclusive licensee may license the licensed patent to a third party to put the patent into practice. If, however, there is an agreement providing otherwise, such agreement shall govern.

Without the consent of the patentee, a non-exclusive licensee is not allowed to license the licensed patent to a third party to put the patent into practice.

The preceding two Paragraphs shall not be asserted against any third party, unless it has been registered with the Patent Authority.

(3)

Article 71 (amended)

An invention patentee may file an application for making amendment(s) to the contents of the specification, claims or drawings only in respect of the following matters:
1. Deletion of the claims;
2. Narrowing the scope of the claims;
3. Correction of the error(s) made in the specification or mistranslation; or
4. Explanation of obscure description(s).
Exception for the mistranslation, any amendment to be made under the preceding Paragraph shall not exceed the scope of contents which were disclosed in the original specification, claims or drawings while filing the patent application.

Where the specification, claims and all necessary drawings submitted under the Article 25(3) are written in a foreign language, the correction of the mistranslation shall not expand the original scope of the said documents in foreign language submitted at filing.
The amendments shall not substantially expand or alter the scope of the patent claims published in the Patent Gazette.

~~The effect of the amendment(s) to the specification and/or drawings shall, upon publication, be retroactive to the filing date of the patent application concerned.~~

(4)

Article 74 (amended)

An invention patent right shall extinguish ipso facto under any of the following circumstances:

1. In the case of expiry on the duration of a patent right, from the day following the expiration;
2. In the case of death of the patentee without an heir, ~~from the date the patent right accrues to the Treasury as provided for in Article 1,185 of the Civil Code;~~
3. In the case of the patentee's failure of effecting the payment of a patent annuity for the second year or any year thereafter within the grace period, from the day following the expiration of the original statutory period for such payment; ~~except for the patent right to be reinstated under Paragraph Two, Article 17 of this Act;~~
4. In the case of voluntary abandonment of a patent right, from the date of the patentee's written declaration to such effect.

If a patentee fails to pay a patent annuity within the original statutory period by chance, the patentee still can file a written application for retrieving the patent right with payment of three(3) times of the official fee within one(1) year from the expiration of the original statutory period.

(5)

Article 77 (added)

When requesting for an invalidation action, an invalidation application which contains the statement and grounds along with evidence shall be submitted.

No changes or supplements should be made to the statement of invalidation after the invalidation is filed. However, the aforementioned does not apply to narrowing the statement.

Any supplemental reason and evidence from the petitioner shall be filed within one month from the date the invalidation action is initiated provided, however, that any supplemental reason and/or evidence that is submitted prior to the conclusion rendered on examination of an invalidation action shall still be examined.

Under any of the following circumstances, no person may file another invalidation action based on the same fact and the same evidence:
1. Once an invalidation action is dismissed after the examination based on the same fact and the same evidence; or
2. Once the new evidence, which is submitted to the Intellectual Property Court according to Article 33 of the Intellectual Property Case Adjudication Act, is considered unsustainable through examination.

We will continue introducing main and practical points of the amendment in succession in our Newsletter in the following issues.

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

Trademark

Ⅰ.	The “Examination Guidelines for Disclaimers” was announced by the TIPO on November 16, 2009 and will be effective as of January 1, 2010.

Ⅱ.	The examples of grounds based on which the examiners may disclaim the indistinctive parts of trademarks ex officio
	According to the Article 19 of the Trademark Act: “A proposed trademark featuring a descriptive or non-distinctive word, sign, symbol, color, or three-dimensional shape, where deletion of that feature will defect the whole of such trademark, may be registered when the applicant disclaims the exclusive right for using the said feature.”. In order to simplify the examination procedures for trademark applications, the examiners may disclaim the indistinctive parts of trademarks ex officio and indicate the said disclaimers in the official gazettes when the trademarks are allowed for registration according to the following examples of indistinctive parts of trademarks. However, if the situations are disputable, the examiners still need to inform the applicants of the same and make overall judgment after reviewing the applicants’ responses. We herewith list some important examples which require the disclaimers from trademarks for reference:
	1.	The generic term used in relation to the designated goods or services: For example, while the mark “ANOSA cosmetics” used on cosmetics, the part of the trademark “cosmetics” should be disclaimed.
	2.	One that represents the quality, effect and other characteristics of the goods or services: such as “BEST, DELUXE, GOOD QUALITY, COLLECTION, FASHION, FRESH, NATURE, NATURAL, PURE, PROFESSIONAL, EXPORT, WATER/SOUND-PROOF, HANDMADE, DIY, HEALTH, ORGANIC, NANO, TECHNOLOGY (TECH, TEK), BIOTECH, BIOCHEMISTRY, BIOMEDICAL, SCIENTIFIC, ECO, GREEN”.
	3.	One’s title, such as “Master, Doctor, Dr”.
	4.	The terms relating to design of goods/ services: such as “SERIES, SYSTEM, COLLECTION, STYLE, DESIGN, REDESIGN, MATERIAL, PRODUCT".
	5.	The types or ways of providing services, such as “WEB, INTERNET, ONLINE, E-COMMERCE”.
	6.	The geographical names: For example, while the mark “Logo matis paris” used on cosmetics and perfumes which come from Paris, “paris” in the mark indicates the place of origin so should be disclaimed. However, the disclaimer of the geographical names will not be allowed if a trademark violates the Article 23.1(11) of the Trademark Act “One that is likely to mislead the public with respect to the nature, quality, or place of origin of the designated goods or services”.
	7.	Year and time, such as “SINCE/ESTD 1990” or “24H”.
	8.	An English or Chinese company name without special design.
	9.	The class to which a company belongs, such as “GROUP, INDUSTRY, INDUSTRIAL, ENTERPRISE, INSTITUTE, FACTORY, INTERNATIONAL, GLOBAL”.
	10.	The nature of a business, such as “BANK, COMMUICATION, INFORMATION, TECHNIC, BIOTECH, TECHNOLOGY, TELECOMMUNICATION, ENGINEERING”.
	11.	The name of a store, terms representing the place of running a business or the gathering of goods, such as “BOUTIQUE, SHOP, WORK SHOP, HOUSE, STORE, STUDIO, MART, PLAZA, ZONE, MALL, WORLD, SHOPPING MALL”.
	12.	The common greetings, idioms or popular sayings, such as KUSO, LOHAS, ORZ.
	13.	The religious terms or logos.
	14.	Generic signs, such as cross sign “＋” or “Rx” for pharmacists used on medical goods/services.
	15.	The descriptive logos which direct to the goods/services.
	16.	Others non-distinctive words, such as “brand”
	17.	The combination of the above mentioned examples.

	(Source: TIPO On-line Bulletin dated November 24, 2009