JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

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

[ February 2010 ] >Back

Patent

Ⅰ.

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

The Patent Act draft amendment made by the TIPO has been approved by the Executive Yuan on December 03, 2009 and submitted to the Legislative Yuan for review and consideration on December 11, 2009. Although there are some differences on the number and description of amended articles between the versions approved by the Ministry of Economic Affairs (MOEA) and the Executive Yuan, it doesn’t influence our following introduction on the main points of the amendment to the current Patent Act:

(1)

Article 76 III (added)

The Patent Authority may proceed with the examination without further notice if the petitioner intends to stall off the proceeding by filing supplemental reasons and evidence, or where the facts based on which the invalidation action is filed are objectively clear enough to be firmly established.

In principle, there is no limitation for both parties involved in the invalidation action to submit reasons/defense and evidence as complete as possible. However, if the examiner finds the petitioner tries to stall off the examination by continuously supplementing reasons and evidence or deems the facts based on which the invalidation action is filed are objectively clear enough, he/she may proceed with the examination directly without further notice in order to expedite the examination of the invalidation action.

(2)

Article 77 (added)

In the process of examining a patent invalidation action, the Patent Authority may conduct inquisition ex officio into the reason and evidence which are within the claim of invalidation but not alleged by the petitioner, and forward the same to the patentee of the patent challenged, who shall defend within a prescribed time period. The Patent Authority may proceed with the examination without further notice if the patentee of the patent challenged fails to file the statement of defense upon expiry of the period.

It should be allowable for the examiner to take the facts (reasons and evidence) which he/she learns during the examination or from the consolidation examination under the amended Article 80 into consideration only if they are within the claim of invalidation action.

For the reason and evidence not alleged by the petitioner but investigated by the examiner ex officio, the patentee should be given the chance to express her/his opinions.

(3)

Article 79 (added)

In the process of examining a patent invalidation action, if there is any application for making amendment(s) to the patent challenged, the Patent Authority shall consolidate the examinations of the invalidation action and the application for amendment(s). Where the amendment(s) to the specification, claims or drawings of the patent challenged is to be approved, the Patent Authority shall give the petitioner a duplicate of such amendment(s).

In the process of examining a patent invalidation action, if there are two and upward applications for amendment(s) made to the same patent challenged, the earlier application(s) of amendment(s) is deemed to have been withdrawn.

No matter when the patentee of the patent challenged files the application for amendment(s), before or after the filing of the invalidation action, and no matter whether the patentee of the patent challenged files the application for amendment(s) respectively or together with the statement of defense against the invalidation action, the examiner shall consolidate the examinations together in order to solve the dispute at a time.

In addition, since the application for amendment(s) is generally related to the grounds of the invalidation action, when the Patent Authority deems the application of amendment(s) to the patent challenged is allowable, they shall send a copy of such amendment to the petitioner for him/her to have a chance to express his/her opinions.

Furthermore, in order to centralize the examination of the invalidation action, there should not be too many applications of amendment(s) for the same invalidation action. Thus, the examination should be made on the final application of amendment(s) and application(s) of amendment(s) filed earlier should be deemed withdrawn. However, when the applications of amendment(s) are filed for different invalidation actions, this Paragraph is not applicable.

(4)

Article 80 (added)

Where there are two and upward invalidation actions filed against the same patent, the Patent Authority may consolidate the examinations thereof, if necessary.

The invalidation actions which are required consolidating examination under the preceding Paragraph may be made a consolidated decision.

The first Paragraph expressly stipulates that the examiner may consolidate the examinations of two and upward invalidation actions filed against the same patent if he/she deems necessary in order to solve the dispute at a time. The second Paragraph stipulates that the examiner may consolidate the decisions of two and upward invalidation actions when he/she has consolidated examinations thereof by referring to Article 78 of the Administrative Appeal Act.

(5)

Article 81 I (amended) and II (added)

For the examination of an invalidation action, the Patent Authority shall designate a patent examiner ~~who did not participate in the examination of the original patent application~~ and shall require that the designated examiner makes a written examination decision which shall be serviced on both of the patentee of the patent challenged and the petitioner concerned.

The decision of an invalidation action should be made to each claim of the patent challenged respectively.

Since the subject matters of examination and the applicable proceedings between a patent application and an invalidation action are different, it is not necessary for the patent examiner who participated in the examination of the original patent application to be defaulted in the examination of the invalidation action. Therefore, the 1st Paragraph of this article is amended.

According to the amended Article 75 II, it will be available to file an invalidation action against part of the claims of a patent challenged, so the examination result may be partly revoked. Thus, the decision should be made to each claim challenged respectively.

(6)

Article 82 (added)

The petitioner may withdraw the invalidation action before a decision thereof is made. However, if the patentee of the patent challenged has filed the statement of defense, it is required to withdraw the invalidation action via consent from the patentee of the patent challenged.

The Patent Authority shall serve a notice of such withdrawal to the patentee of the patent challenged. If the patentee of the patent challenged fails to submit a statement of opposition against such withdrawal within ten (10) days after the service of the notice, it is deemed that the patentee of the patent challenged has agreed to such withdrawal.

In order to protect the interest of the patentee of the patent challenged, the petitioner cannot withdraw the invalidation action without the patentee’s advance consent after the patentee has submitted the statement of defense.

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)

Ⅱ.

The Accelerated Examination Program (AEP) applications filed by domestic applicants increased greatly in December 2009.

According to the TIPO’s statistics, the monthly number of AEP applications is 75 cases in average in 2009. The two major applicants who filed AEP applications last year are HON HAI Technology Group (Hon Hai) and AU Optronics Corporation (AUO).

However, the AEP applications filed by domestic applicants amazingly increased in December 2009. There are 261 applications of AEP filed in December 2009 and 80% of them were filed by AUO.

More than 50% of the AEP applications submitted USA patents as the reference for the AEP examination, but it seems that the number of submitting Chinese patents as references gradually increases. As to the fields of patent applications requesting AEP, Opto-Electronic industry and liquid crystal are in the majority, around one third (1/3). Two tables are attached below for easy reference.

Table 1

Statistics of AEP Applications
Time	AEP filed by domestic applicants	AEP filed by foreign applicants	Total Number
July 2009	17	38	55
August 2009	19	37	56
September 2009	19	34	53
October 2009	56	32	91
November 2009	76	31	107
December 2009	261	50	311
Material source: the TIPO

Table 2

Ranking	The top five technical fields of the patent applications which requested the AEP	The corresponding foreign patents which were submitted as references for the AEP
1	Opto-Electronic industry and liquid crystal	USA
2	Electricity, measuring, lighting and storage apparatus	China
3	Human necessities	Japan
4	Machinery	Europe
5	Chemical engineering	Korea
Material source: the TIPO

After the AEP was launched on January 01, 2009, it does expedite the substantive examination. In average, it takes about 52.5 working days from filing the requests of AEP to receive the examiners’ official actions or notices of allowance. Furthermore, the limitation on the reference data is loosening as well. Originally, only a copy of Notice of Allowance and claims to be or have been granted and published in a corresponding invention in a foreign country could be available reference for requesting the AEP applications. Since January 01, 2010, under the revised AEP, it is acceptable to file AEP applications if any of the following conditions is met:

(1)

The substantive examination of the corresponding application in any foreign country has been completed and the corresponding application has been approved;

(2)

An examination notice and search report of the corresponding application in any foreign country have both been issued by the patent authority in the EU, the U.S. or Japan but a final result hasn’t yet been available; or

(3)

An expedited examination is deemed necessary for commercial practice.

Therefore, it is worthy for the applicants to consider speeding up the examination of their patent applications by filing the AEP applications as soon as possible in order to grasp the potential or existing business opportunities and commercial interests.

(Source: The TIPO News on January 11, 2010 and the Economic Daily dated January 18, 2010) (http://udn.com/NEWS/FINANCE/FIN10/5371822.shtml)
(http://www.tipo.gov.tw/en/News_NewsContent.aspx?NewsID=4265)

Trademark

Ⅰ.

The Trademark Act draft amendment made by the TIPO has been submitted to the Ministry of Economic Affairs (the MOEA) for review and evaluation on November 30, 2009.

We will introduce the main points of the amendment to the current Trademark Act in our later Newsletters after it is approved by the MOEA and the Executive Yuan and submitted to the Legislative Yuan for review and consideration in due course.

(Source: TIPO News dated November 30, 2009)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4166)

Ⅱ.

When a trademark proprietor uses a registered trademark which comprises the word “organic” and is designated for use on goods/services related to agricultural products or agricultural processed products, such use should apply to the regulations stipulated in the “Agricultural Production and Certification Act”

When the “Agricultural Production and Certification Act” was promulgated on January 29, 2007, organic agricultural products or agricultural processed products have been required to obtain the necessary certificates before they are marketed or imported but there was a two-year deferment. After the two-year deferment, i.e. since January 31, 2009, agricultural products or agricultural processed products which bear the word “organic” without obtaining the necessary certificates in advance may be fined with a penalty of more than NT$60,000(around US$2,000) less than NT$300,000 (around US$10,000).　The penalty will be fined on time basis until the requirements are satisfied.

Furthermore, failing to conform to the said regulations can be an available ground for the TIPO or a third party to lodge an invalidation or a cancellation application because of satisfying the conditions set in Article 23 I and Article 57 I (5) of the Trademark Act.

In the light of the foregoing information, domestic or foreign trademarks comprising the word “organic” and designating goods, retailing services, restaurant services or import and export services related to agricultural products or agricultural processed products which are registered before the effectiveness of the said Act should conform to the regulations when the organic agricultural products or agricultural processed products are imported or marketed in Taiwan in order to avoid the penalty and risk of being cancelled.

(Source: TIPO News dated January 14, 2010)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4286)

Ⅲ.

Whether the likelihood of confusion between two trademarks can be eliminated by their coexistence, the period of such coexistence as well as other factors should be taken into consideration to make a comprehensive judgment.

                             vs.
             (the trademark cited as basis                                       (the trademark at issue)
              for opposition)

In this case, the opposition was filed based on Article 23 I (13). That is the trademark at issue “金嗓” was deemed similar to the trademark cited as the basis for opposition “金嗓子”, which was designated for use on the same or similar goods in I.C. 09.

The TIPO rejected the opposition filed by the opponent because the trademark at issue was more famous to the public and the trademark proprietor obtained the trademark registration through means of bona fide. However, such reasons cannot explain why there is no likelihood of confusion between the two marks when they are similar to each other and are designated for use on the same or similar goods.

When determining if there is any likelihood of confusion between two trademarks, some relevant factors should be considered, such as the level strength of distinctiveness of the trademarks, the extent degree of similarity between the trademarks, the extent degree of similarity between the goods/services, status of the diversified operation of the prior right holder, the extent to which relevant consumers are familiar with the trademarks concerned, whether the applicant of the trademark at issue has filed such application in good faith and other factors that may cause confusion.

When taking the factor of coexistence of two trademarks into account, how long such coexistence lasts, the extent to which relevant consumers are familiar with the trademarks concerned and the extent degree of similarity between the goods/services should also be considered.

In this case, due to factors that there is very high degree of similarity between “金嗓子” and “金嗓”, they are designated on the same or similar goods in I.C. 09, and the coexistence between them are not long enough, it is very possible to cause the relevant consumers misidentify the two trademarks as coming from the same source or as having an affiliation, license, franchise or any other similar relationship. Therefore, there is likelihood of confusion between “金嗓子” and “金嗓” and the trademark registration of “金嗓” should be cancelled.

(Source: TIPO Newsletter dated January 05, 2010)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4247)

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

10-1FL., NO.23, SEC.1, CHANG-AN E. RD., TAIPEI 10441, TAIWAN, R.O.C

TEL: 886-2-25310876 FAX: 886-2-25812761

http://www.jaw-hwa.com.tw E-mail: jawhwa@jaw-hwa.com.tw