The amended guidelines clearly regulate: (1) the requirements for obtaining the filing date of a patent application; (2) the effect of failing to submit the specifications or drawings; (3) the handling guidelines when omitting parts of specifications and drawings; (4) the principles of handling the specifications and drawings written in foreign languages.

Amending the requirements of “necessary drawings” for Invention and Utility Model applications.

Amending the regulations for the designated drawing(s).

Amending the regulations about refund of official fees.

A prior application as a basis of domestic priority claim to a later application can proceed with the application of division or recordal of change of attorney or amendment of address in the TIPO before the later application is approved to register.

Clearly regulating what content should be included in the specifications according to the Rule 15 of “Enforcement Rules of the Patent Act implemented on August 19, 2008”.

While an original design patent/application proceeds with recordal of any change, its associated design(s), if any, should also do the same recordal(s) of change(s) at the same time and vice versa. But, the official fee is only required for one design patent for doing the same record(s).

The part “The amendment of specifications and drawings in foreign languages can be done together with the Chinese ones for granted patents” is deleted from the amended guidelines, because the amendments to granted patents are for the granted and published specifications and drawings in Chinese only according to the practice in Taiwan.

Article 103 (amended)

        For any civil proceedings pending in a court in connection with an invention patent, the court may suspend the trial process until a decision on the patent application, invalidation, or revocation action related thereto has become irrevocable.
     When rendering a ruling for suspending the trial proceedings in accordance with the provisions set out in the preceding Paragraph, the court shall look into the legitimacy of the cause of the invalidation action.
        Where an invalidation petition involves handling of infringement litigation case(s), the Patent Authority shall give priority to examination of such invalidation petition. 
    
Our comments: According to the “Intellectual Property Case Adjudication Act”, Article 16.1: When a party claims or defends that an intellectual property right shall be cancelled or revoked, the court shall decide based on the merit of the case, and the Code of Civil Procedure, Code of Administrative Litigation Procedure, Trademark Act, Patent Act, Species of Plants and Seedling Act, or other applicable laws concerning the stay of an action shall not apply.”　Therefore, the Paragraphs one and two of this Article are no longer applicable under the current situation.

Article 104 (amended)

        An unrecognized foreign juristic person or organization may file civil suits in respect of the matters governed by this Act. However, that the nationals or entities of the ROC are entitled to such rights in said foreign country under a treaty, or the national acts, ordinances or customary practices of said foreign country. A patent protection agreement between a ROC entity or organization and a foreign entity or organization and duly approved by the Competent Authority shall have the same effect.
 
Our comments: Since Taiwan became a member of WTO on January 1, 2001, any foreign applicant who is a resident or locates in one of WTO member countries will be allowed for the protection of his/her patent rights in Taiwan. Therefore, the later part of this Article is no longer applicable under the current situation.

Article 108 (added)

        An application for utility model patent shall be filed with the Patent Authority by the person entitled to applying for patent by submitting a request form, a specification, claim(s), an abstract, and the necessary drawings.
        The filing date of a utility model patent application shall be the day on which the application, specification, claim(s), and necessary drawings are submitted in full.
        Where a patent applicant does not submit a specification, claim(s) and the necessary drawings prepared in Chinese language at the time of patent filing, but has submitted the said documents prepared in a foreign language, and where the said Chinese language documents are submitted within the time period specified by the Patent Authority, the filing date shall be the date on which the foreign language version of the said documents were originally submitted.
        Failure to file the Chinese language documents within the specified time period as stated in the preceding paragraph shall result in dismissal of the patent application; however if the Chinese language documents are filed prior to an administrative decision is made, the date on which the Chinese language documents are filed shall be regarded as the filing date, and the documents prepared in foreign language shall be deemed not having been submitted.

Our comments: The above Article is added for Utility Model applications in order to avoid confusion with the requirements of Invention patent applications, since the necessary drawings are not one of the requisitions for Invention patent applications but for Utility Model applications.

Article 109 (added)

        In the case of a patent application which substantially involves two or more utility models, the applicant may, upon notice given by the Patent Authority or upon request by the applicant, apply for divisional application(s).
Divisional application(s) shall be filed before a decision on the parent utility model application is issued.

Our comments: The above Article is added for Utility Model applications in order to avoid confusion with the requirements of divisional applications for Invention patent applications.

Article 110 (amended)

        Where an application originally filed for invention or design patent is converted into a utility model patent application, or where an application originally filed for utility model patent is converted into an invention patent application, the filing date of the original patent application shall be taken as the filing date of the converted patent application. However, that no application for patent conversion may be filed from the date the written decision granting a patent or after sixty (60) days from the written decision denying a patent on the original patent application is served.
        An application for patent conversion shall not be made under any of the following conditions:
1. Where a decision allowing the original patent application has been served;
2. Where two (2) months have elapsed after serving a decision rejecting the original invention or design patent application.
3. Where thirty (30) days have elapsed since serving a decision rejecting the original utility model patent application.
A converted patent application shall not exceed the scope of disclosure in the specification, claims, or drawings filed for the original patent application.

Our comments: The above Article clearly regulates that, under what kinds of conditions, an application for patent conversion shall not be made.

        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) 

Ⅰ.

Introduction III - main points of the amendment to the current Trademark Act which has been submitted to the Executive Yuan for review and evaluation on March 04, 2010.

       In our last Newsletters in April and June, we introduced some main points of the Trademark Act draft amendment made by the TIPO which has been submitted to the Executive Yuan for review and evaluation on March 04, 2010. We herewith continually introduce the remaining main points for your best reference.

The amended Trademark Act allows the late payment of registration fee within six months after the expiry of the official due date under some premises. (Amended Article 32.3)

The regulations of two installments of registration fee are deleted from the amended Trademark Act.

The regulations about exclusive license and non-exclusive license are added in the amended Trademark Act. (Amended Article 39)

When the trademarks which are cited as the bases for Cancellation or Invalidation applications have been registered for three years, the applicants of the Cancellation or Invalidation applications should submit the evidence of use of the said trademarks happened within three years before the institution of the Cancellation or Invalidation applications. Alternatively, the reasonable cause of non-use should be submitted. The foregoing provisions are applied only to the Cancellation or Invalidation applications filed after the enforcement of the amended Trademark Act. (Amended Articles 57, 67, 104.2 & 105.2)

The amended Trademark Act explicitly stipulates the regulations of trademark infringement as follows:

 (1) Stipulating the types of infringement actions (Amended Article 68)

 (2) Explicitly stipulating the subjective elements of the liability for trademark infringement:
When a trademark right holder requests for excluding or the prevention of the infringement, it is not necessary to prove whether the infringement is arisen with the intent or negligent act by the infringer subjectively. However, if the trademark right holder claims for damages, proving that the infringement is arisen with the intent or negligent act by the infringer subjectively will be necessary.

 (3) Amending the regulations about “being deemed the trademark right infringement”:

 (i) Whenever it can be proved that an act is likely to dilute the distinctiveness or reputation of a well-known trademark or mark in practice, such act will be deemed an infringement of trademark rights in order to offer complete protection to the well-known trademarks or marks.

  (ii) It will be deemed an infringement of trademark rights when knowingly manufacturing, holding, displaying, selling, exporting or importing any labels, tags, packing, which haven’t been combined with goods or services or articles in relation to the trademark right infringement. (Amended Articles 70)

(4) Adding the Border Measures about the custom authority’s detention of the infringing goods and their provision of the information of infringing goods to the trademark right holders ex office:
Under the circumstance of no prejudice to the confidential information of the detained goods, the Custom Authority may assist the applicants or the party whose goods are suspended of release in inspecting the infringing goods upon application and offer information of infringing goods to the trademark right holder according to the amended Trademark Act .(Amended Articles 75 & 76)

The amended Trademark Act explicitly stipulates the regulations of Certification and Collective trademarks. (Amended Articles 79~83, 87, 88)

The amended Trademark Act adds the regulation about the criminal punishment for infringement of Certification trademarks. (Amended Article 95)

The amended Trademark Act adds the regulation about the criminal punishment to the person who knowingly sells or displays for sale the infringing goods through the ways of electronic media or Internet. (Amended Article 96)

The amended Trademark Act explicitly stipulates that the date of implementation of the regulations concerning smell trademarks shall be made separately by the competent authority. (Amended Article 106.2)

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