Taiwan and China have agreed that the ECFA and IPR Agreement became effective (on) September 12, 2010.

        The “Cross-strait Agreement on Intellectual Property Rights Cooperation and Protection (IPR Agreement)” has been approved by Taiwan’s Legislative Yuan. The signing of the IPR Agreement will strengthen the cross-strait protection of patent, trademark, copyright, and plant variety rights under the principles of equality and reciprocity.

        The most important benefit to sign the IPR Agreement is to mutually recognize priority right of patent, trademark and plant variety.

        However, the applicants from both sides still cannot claim priority in practice so far even though the IPR Agreement has become effective because the committees from both sides are still working on negotiating the resolution of related issues and the operation of the admission of priority right in detail.

        After there is a conclusion, both sides will officially announce when they will mutually admit the priority right of patent, trademark and plant variety in due course.

(Source: Executive Yuan Headline News dated September 16, 2010)
(http://www.ey.gov.tw/ct.asp?xItem=73148&ctNode=1335&mp=11)

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

   Article 110 (amended)

        Where a patent applicant applies for making supplement or amendment to the specification or drawings enclosed in the original application, an application for such shall be filed within two (2) months from the filing date of the original application.

        When conducting the formality examination of a utility model patent application, the Patent Authority may, upon request or ex officio, notify the applicant to amend the specification, claim(s) and/or drawings within a specified time limit. 
    
Our comments: The amendment will make the specification, claims and drawings more complete which is conducive to the examination. Thus, it is not necessary to limit that the amendment can only be filed within two (2) months from the filing date of the Utility Model patent application.

   Article 114 I (6) (added)

        Where, through formality examination of a utility model patent application, a decision rejecting the said patent application shall be issued if any of the following exists:

1.Where the utility model does not relate to the form, structure, or composition of an object;

2.Where there is a violation of Article 107;

3.Where there is a violation of Paragraph 4 of Article 26, applicable mutatis mutandis under Article 122 of this Act;

4.Where the specification, claim(s), or drawings does (do) not disclose items that need to be disclosed, or the disclosure therein is obviously unclear; and

5.Where the specification, claim(s), or drawings does (do) not disclose items that need to be disclosed, or the disclosure therein is obviously unclear; and

6.Where an amendment obviously goes beyond the scope of disclosure in the originally filed specification, claims and/or drawings.

   Article 117 IV (added)

        After a utility model patent application is published, any person may, with respect to the conditions set forth in Item 1 or Item 2, Paragraph One, or Paragraph Four of Article 94; Article 95; or Article 31 applicable mutatis mutandis under Article 108 of this Act, file an application with the Patent Authority for issuance of a utility model patent technical report. 

        The Patent Authority shall publish in the Patent Gazette the fact that an application for issuance of a utility model patent technical report has been filed.

        The Patent Authority shall assign patent examiner(s) to issue a utility model patent technical report, and the report shall be affixed with the name(s) of the above-mentioned examiner(s). 

        For an application filed under Paragraph 1 of this Article, the Patent Authority shall issue a utility model patent technical report with respect to matters set forth in Item 1, Paragraphs 1 & Paragraphs 2 of Article 22, applicable mutatis mutandis under Article 122, Article 23, applicable mutatis mutandis under Article 122, and Article 31, applicable mutatis mutandis under Article 122. 

        For an application for issuance of a utility model patent technical report as filed under Paragraph 1 of this Article, if it is stated in the application that commercial practice of the utility model patent is made by a party other than the patentee and if supporting evidence is submitted, the Patent Authority shall issue the utility model patent technical report within six (6) months. 

        An application for issuance of a utility model patent technical report can still be filed after the utility model patent has become extinguished ipso facto.

        An application filed in accordance with Paragraph 1 shall not be withdrawn.

Our comments:
1. Making reference to the Patent Authorities in Japan, Korea and China, they only issue the utility model patent technical report based on the official database. That is, the factor of being put to public use will not be taken into account in the utility model patent technical report. Therefore, it is not necessary to regulate under what conditions people can apply for issuance of a utility model patent technical report. 

2. Article 117 IV clearly stipulates what matters the Patent Authority shall take into account when someone applies for the issuance of a utility model patent technical report.

   Article 120 (added)

        With respect to examination of an application for correction, except for the situation set forth in Paragraph 1 of Article 79, applicable mutatis mutandis under Article 122 of this Act, the Patent Authority shall conduct formality examination of the correction application, issue a decision and serve it on the applicant.

        A decision rejecting a correction application shall be issued if, through formality examination, the correction application is found to include any of the following events:
1. Where there is an event prescribed in Items 1 through 5 of Article 114; an
2. Where the correction goes beyond the scope of disclosure in the claims or drawings as published.

Our comments: The above Article is added for Utility Model patent applications in order to clearly stipulate the ways and procedures for the examination of an application for correction.

   Article 121 I (1) (amended) and Article 121 III (added)

        Any person may file an invalidation petition against a utility model patent with the Patent Authority under any of the following circumstances:

        1. Where there is a violation of any of the provisions set forth in Articles 106, Article 107, Paragraph 3 of Article 110, Paragraph 2 of Article 112, Article 22 applicable mutatis mutandis under Article 122, Article 23 applicable mutatis mutandis under Article 122, Article 26 applicable mutatis mutandis under Article 122, Article 31 applicable mutatis mutandis under Article 122, Paragraph 4 of Article 34 applicable mutatis mutandis under Article 122, Paragraph 2  of Article 43 applicable mutatis mutandis under Article 122, Paragraph 3 of Article 44 applicable mutatis mutandis under Article 122, Paragraphs 2 through 4 of Article 69 applicable mutatis mutandis under Article 122 of this Act. 

        2. Where the home country of the patentee does not accept patent applications filed by nationals of the ROC; and 

        3. Where there is a violation of Paragraph 1 of Article 12 of this Act, or where the owner of the utility model patent concerned is not entitled to apply for patent.
Invalidation petitions field based on Item 3 of the preceding paragraph shall be filed by interested parties.

        With respect to ground(s) for filing an invalidation petition against a utility model patent, the provisions in effect at the time of allowance of the said patent shall govern.  However, if an invalidation petition is filed based on any of the grounds listed in Paragraph 3 of Article 110, Paragraph 4 of Article 34 applicable mutatis mutandis under Article 122, Paragraph 2 of Article 43 applicable mutatis mutandis under Article 122, or Paragraph 2 of Article 69 applicable mutatis mutandis under Article 122 of this Act, such invalidation petition shall be governed by the provisions applicable at the time of filing the invalidation petition.

        A decision on an invalidation petition shall be affixed with the name(s) of the patent examiner(s).

Our comments:
1. The amended article added the following two matters to be the grounds for filing an invalidation action against the UM patent:

(1) Where an amendment is made with respect to any of the Chinese language documents submitted under Paragraph 3 of Article 108, such amendment goes beyond the scope of disclosure in the originally filed foreign language documents.

(2) A divisional UM patent application goes beyond the scope of contents disclosed in the specification, claims, or drawings filed for the original UM patent application.

(1) a divisional UM patent application goes beyond the scope of contents disclosed in the specification, claims, or drawings filed for the original UM patent application;

(2) except for correction(s) of translation error(s), an amendment exceeds the scope of disclosure in the originally filed specification, claim(s), or drawings of the UM patent application;

(3) except for correction of incorrect translations, a correction goes beyond the scope of disclosure in the specification, claim(s), or drawings of the UM patent application as filed, or

(4) a correction substantially enlarges or alters the scope of the claim(s) of the UM patent application as published.

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

Ⅰ.

The TIPO no longer accepts any request for renewal filed earlier than six months before the term expiration from September 01, 2010.

        According to Article 28 I, a request for renewal on trademark term shall be filed between six months before and after the term expiration; those file within six months after the term expiration shall pay the registration fee in double. However, some requests were filed much earlier than the said period in practice, and caused dispensable disputes. In order to avoid such kind of dispute, the TIPO announced that they no longer accept any request for renewal filed earlier than six months before the term expiration from September 01, 2010.

(Source: TIPO News dated August 30, 2010)
http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=4653

Commercializing someone’s trademark by using it in a three-dimensional shape will constitute the trademark infringement.

        Two main factors to judge if an action constitutes the trademark infringement are (1) whether using someone’s trademark in a three-dimensional shape is a kind of use of trademark, and (2) whether such use will likely cause confusion to the consumers.

        The “use of trademark” connotes the utilization for marketing purpose of trademark on such goods thereof which sufficiently makes relevant consumers recognize it as identification to source of the goods. There is no limitation in such use as to whether the trademark should be used in a two-dimensional graphic or in a three-dimensional shape.

        In addition, the “possibility of causing confusion” means consumers will likely regard that such goods thereof are from the registrant or the licensee(s) of the registrant.

        In this case, the goods detained were similar to the complainant’s registered trademarks (Snoopy, Doraemon and Winnie the Pooh) cited as the bases for this criminal case. It was obviously that the defense has not only used the complainant’s registered trademarks but also used them as identification to source of the goods detained. Although the defense argued that the complainant didn’t obtain the rights of those trademarks in three-dimensional shape, it was not adopted.  In conclusion, the defense’s use of the complainant’s registered trademarks in three-dimensional shapes constituted the trademark infringement because the action satisfied the two conditions indicated as items (1) and (2) in the first paragraph of title II.

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