JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

I. It is available to file a new application in Taiwan by claiming the priority date of a PCT application but it is unable to enter the national phase in Taiwan through the PCT route.

[ April 2010 ] >Back

Patent

Ⅰ.

It is available to file a new application in Taiwan by claiming the priority date of a PCT application but it is unable to enter the national phase in Taiwan through the PCT route.

        We still continue receiving inquiries from some foreign attorneys about how to enter the national phase in Taiwan for a PCT application in these days, so we take this chance to clarify this kind of misunderstanding again in our newsletter.

        Please note that since Taiwan is not a member of PCT, a PCT application is unable to enter the national phase in Taiwan. However, it is available to file a new application in Taiwan by claiming the priority date of a PCT application within 12 months from the filing date of the PCT application if it is the earliest corresponding prior application.

        Furthermore, we would like to draw your best attention to that we adopt the principle of absolute novelty in Taiwan. The applicant will have to worry about the problem of losing novelty if his/her PCT application has been laid open before the filing of the same invention in Taiwan. Therefore, if Taiwan is the current or potential market the clients need to protect, please remind the clients to independently file the application in Taiwan as early as they can when they consider filing the PCT application or the respective one worldwide.

Ⅱ.

Introductio VI (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.

(1)

Article 83 (2) (added)

Under any of the following circumstances, any person shall not be allowed to file a separate invalidation petition against the same patent based on the same fact and the same evidence:

Where another invalidation petition filed based on the same fact and he same evidence has been dismissed through examination; and
Where new evidence is submitted with the Intellectual Property Court pursuant to Article 33 of the Intellectual Property Case Adjudication Law, and such new evidence is considered groundless upon examination

When the petitioner is dissatisfied with the unfavorable decision made by the TIPO and has submitted new evidence for the IP Court’s consideration according to Article 33 of the Intellectual Property Case Adjudication Act, if such evidence has been regarded insufficient for the revocation of the patent challenged after examination, no person should be allowed to file another invalidation action up to the TIPO based on the same fact and the same evidence because the IPO has responded to such new evidence during the proceeding in the IP Court.

(2)

Article 84 I (added)

Where an invalidation petition against an invention patent is sustained upon examination, the patent right shall be revoked; such revocation can be made on a claim-by-claim basis.

According to Article 75 II of the amended Patent Act, it will be available to file an nvalidation action against the claims of a patent challenged respectively, so the revocation can be made on a claim-by-claim basis.

(3)

Article 89 II(added)

Under any of the following circumstances, for which a compulsory patent licensing is needed, the Patent Authority may, upon request, grant compulsory licensing of a patent:

Where a non-profit-seeking practice of the patent is sought for enhancement of public welfare;
Where the practice of a later invention or utility model patent may inevitably infringe on an earlier invention or utility model patent, and where the later invention or utility model patent offers significant technical improvement with considerable economic significance over the prior invention or utility model patent.
Where the practice by the owner of a plant variety right must involve the practice of another person's patent covering the concerned biological technology and the plant variety right offers significant technical advantage (s) with considerable economic significance over the said patent.
Where a patentee has committed act(s) restricting competition or has committed unfair competition acts, which have been confirmed via a judgment issued by a court or a decision issued by the Fair Trade Commission of the Executive Yuan.

When a concerned biological technology is simultaneously protected by both a plant variety right and a patent right but the two rights owned by different persons, if the practice by the owner of the plant variety right must involve the practice of another person's patent covering the concerned biological technology and the plant variety right offers significant technical advantage(s) with considerable economic significance over the said patent, the owner of the plant variety right may apply for compulsory licensing of the patent.

On the other hand, if the practice by the patentee must involve the practice of another person’s plant variety right, he/she should follow the rules in The Plant Variety and Plant Seed Act.he/she should follow the rules in The Plat Variety and Plant Seed Act.

(4)

Article 89 IV (added)

An application for compulsory licensing of a patent in accordance with Items 1 through 3 of Paragraph 2 shall be accepted only when the applicant for compulsory licensing fails to reach a licensing arrangement with the patentee within a considerable time period based on reasonable commercial terms and conditions proposed thereto.

In order not to dilute the exclusive right granted to a patent, the amended Patent Act explicitly stipulates that the application for compulsory licensing of a patent in accordance with Items 1 through 3 of Paragraph 2 shall be accepted only when the applicant for compulsory licensing fails to reach a licensing arrangement with the patentee within a considerable time period based on reasonable commercial terms and conditions proposed thereto.

(5)

Article 89 V (added)

For an application for compulsory licensing of a patent in accordance with Item 2 or 3 of Paragraph 2, the owner of such patent may propose reasonable terms and conditions and seek grant of compulsory licensing of the patent or the plant variety right owned by the applicant filing the earlier compulsory licensing application.

Owing to the nature of compulsory cross-license from Article 31 (l) (ii) of the TRIPS, i.e. “the owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the invention claimed in the second patent”, the amended Patent Act therefore explicitly stipulates that for an application for compulsory licensing of a patent in accordance with Item 2 or 3 of Paragraph 2, the owner of such patent may propose reasonable terms and conditions and seek grant of compulsory licensing of the patent or the plant variety right owned by the applicant filing the earlier compulsory licensing application.

(6)

Article 90 III (added)

A decision on an application for compulsory licensing shall be made in writing, and shall indicate the reasons, scope, time period, and the required compensation.

To well balance the protection of patent right and the preservation of the public welfare, the amended Patent act therefore explicitly stipulates that the TIPO shall simultaneously appraise a reasonable compensation for the patentee when deciding an application for compulsory licensing so as to let the patentee acquire the compensation in good time.

(7)

Article 91 I (added)

Where a compulsory licensing granted in accordance with Paragraph 1 of Article 89 is considered no longer necessary by the central government authority in charge, the Patent Authority shall terminate the compulsory licensing grant upon a notice from the central government authority.

Considering that the compulsory licensing stipulated in Article 89 I is an act of restricting the patent right by the power of government, if the central government authority in charge thinks it is no longer necessary to have the compulsory licensing, the Patent Authority shall terminate the compulsory licensing grant upon a notice from the central government authority so as to release the restriction on the patent right.

(8)

Article 91 II (added)

The Patent Authority may, upon request, terminate the grant of compulsory licensing under any of the following circumstances:

Where the fact warranting the compulsory licensing grant has been changed and compulsory licensing is no longer necessary.
Where the licensee fails to properly practice the patent as required in the compulsory licensing grant;
Where the licensee fails to pay the compensation as determined by the Patent Authority.

The nature of compulsory licensing is a kind of disposition which forces both parties to conclude a license contract. Thus, after the grant of compulsory licensing, it shall be deemed that both parties have established a contract of license. In view of this, whether it is necessary to terminate the grant of compulsory licensing shall be claimed by the patentee on account of preservation of his rights. Therefore, according to the amended Patent Act, the Patent Authority may not ex offocio annul the compulsory license any more.

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

(Source: TIPO News dated December 15, 2009)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4199)

Ⅲ.

TOP 100 domestic and international applicants

The TIPO has updated and issued the domestic and international applicants ranking in top 100 in 2009. We list below the top 10 of both the domestic and international applicants with figures for your best reference. You can see that there is a big difference between the top 1 and the top 2 no matter for the domestic or the international applicants.

Table 1：Domestic Patent Applicants in 2009 (Top 10)

Ranking	Applicant	Invention	Utility Model	Design	Total
1	HON HAI PRECISION INDUSTRY CO., LTD.	2,269	818	163	3,250
2	INDUSTRIAL TECHNOLOGY RESEARCH INSTITUTE	796	20	4	820
3	INVENTEC CORPORATION	455	145	6	606
4	AU OPTRONICS CORPORATION	523	0	0	523
5	CHENG UEI PRECISION INDUSTRY CO., LTD.	25	281	133	439
6	MEDIATEK INC	343	0	0	343
7	FAR EAST UNIVERSITY	76	253	0	329
8	FOXCONN TECHNOLOGY CO., LTD.	235	3	69	307
9	CHI MEI OPTOELECTRONICS CORP	273	6	0	279
10	CHUNGHWA PICTURE TUBES, LTD.	193	79	0	272

Table 2：International Patent Applicants in 2009 (Top 10)

Ranking	Applicant	Invention	Utility Model	Design	Total
1	QUALCOMM INCORPORATED	1,230	0	0	1,230
2	SONY CORPORATION	490	0	35	525
3	KONINKLIJKE PHILIPS ELECTRONICS N.V.	360	0	36	396
4	TOKYO ELECTRON LIMITED	330	1	25	356
5	INTERNATIONAL BUSINESS MACHINES CORPORATION	352	0	0	352
6	SUMITOMO CHEMICAL COMPANY LTD.	317	0	1	318
7	APPLIED MATERIALS, INC.	291	3	1	295
8	INTERDIGITAL TECHNOLOGY CORPORATION	250	0	0	250
9	FIH (HONG KONG) LIMITED	177	10	29	216
10	KABUSHIKI KAISHA TOSHIBA	170	0	36	206

Trademark

Ⅰ.

The Trademark Act draft amendment made by the TIPO has been reviewed by the Ministry of Economic Affairs (the MOEA) and submitted to the Executive Yuan for review and evaluation on March 04, 2010.

The Trademark Act draft amendment made by the TIPO has been submitted to the Executive Yuan for review and evaluation on March 04, 2010. Some main points of the amendment to the current Trademark Act are introduced below for your best reference.

The amended Trademark Law explicitly stipulates that the objects which can be applied for registration and be protected are Trademarks, Certification Marks, Collective Membership Marks and Collective Trademarks. (Amended Articles 1 and 2).
The amended Trademark Law explicitly stipulates that it can be recognized as trademark use if it is possible to hold, display, sell, export or import goods or services by means of audio and visual digitization, electronic media, network or other mediums for marketing purposes.(Amended Article 5)
The amended Trademark Law opens up any signs sufficient to identify the source of goods/services are eligible to apply for trademark registrations, and explicitly stipulates that the mark specimens must be presented in clear, nambiguous, complete, objective, durable and easy to be understood manners. (Amended Articles 18 and 19 III)
The amended Trademark Law includes the priority rights stipulated in Article 11 of the Paris Convention. That is when goods or services bearing a trademark to be applied for registration are exhibited at an official or officially recognized international exhibition held in the territory of Taiwan, and the trademark is filed for registration within six months after the exhibition, the date of troduction of the goods and services into the exhibition shall be regarded as the filing date. (Amended Article 21)
The amended Trademark Law explicitly stipulates that unsubstantial changes to a registered trademark will be accepted. (Amended Article 23 proviso)
The amended Trademark Law explicitly stipulates that the applicants may file a rectification to the particulars of an application or registration provided that such rectification still preserves the ameness of the trademark and does not extend the scope of goods or services. (Amended Articles 25 and 38)
The amended Trademark Law explicitly stipulates that a trademark may be jointly owned by two or more persons, and adds relevant provisions for application, assignment, division, contraction, license and pledge of a jointly owned trademark. (Amended Articles 7, 28 and 46)

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

(Source: TIPO News dated March 10, 2010)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4383)

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

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