JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

For a design patent application which substantially covers two or more designs, the applicant may, upon request by the Patent Authority or upon his/her own request, apply for dividing the original design patent application into two or more divisional applications.

[ February 2011 ] >Back

Patent

Ⅰ.

The refund of the official fees of substantive examination

According to the “Regulations of Patent Fees” effective on January 1, 2010, if the applicants withdraw their patent applications before the examiners issue the 1st official actions, the applicants may apply for refund of the official fees of substantive examination. In 2010, about 2700 patent applications were withdrawn by the applicants. However, there are still a large amount of patent applications no longer requiring the protection in Taiwan but remaining under the substantive examinations, because the applicants do not request for the withdrawal of the patent applications from the TIPO. Such situation causes a waste of the manpower on patent examination in the TIPO. Therefore, the TIPO specially issued this notice to remind the applicants that for those patent applications in which the applicants are no longer interested, the applicants may consider filing the requests of withdrawal of applications before receiving the 1st official actions. The TIPO will refund the official fees of substantive examination for the applicants’ best interests and saving the TIPO’s manpower.

(Source: TIPO News dated April 11, 2011)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=5194)

Ⅱ.

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

Article 140 (Added)

    For a design patent application which substantially covers two or more designs, the applicant may, upon request by the Patent Authority or upon his/her own request, apply for dividing the original design patent application into two or more divisional applications.

    A divisional application shall be filed before a decision for reexamination stage is issued.

    For a divisional patent application, the examination thereof shall be continued from the examination procedure left unfinished during examination of the original patent application.

Our comments:

According to Paragraph 1 of Article 129 of the amended Patent Act, the owner for a design patent and its derivative design patent(s) should be the same. Thus, when there is any change on the rights of the design patent, its derivative design patent(s) should be accordingly changed together.

According to Article 137 of the amended Patent Act, a derivative design patent shall expire simultaneously when the original design patent expires. However, when the original design patent right has become extinguished ipso facto or has been irrevocably revoked, the derivative design patent rights are not influenced. If there are two or more derivative design patents remaining in effect, they are still similar to each other, so should be assigned, entrusted, licensed, or pledged together.

Article 141 (Amended)

A design patentee may file an application with the Patent Authority for correcting only the mistake or obscure statement contained in the specification and drawings of the granted patent.
After approval of the correction(s) made in accordance with the preceding Paragraph, the Patent Authority shall publish the cause for such correction(s) in the Patent Gazette.
The correction(s) approved and made in the specification and drawings shall take effect retroactively from the filing date of said design patent application.
A design patentee may apply to correct the specification and/or drawings only under any of the following grounds:
1. to correct erroneous disclosure or incorrect translations; and
2. to clarify unclear disclosure.
Except for correction of incorrect translations, a correction shall not go beyond the scope of disclosure in the specification or drawings as filed.
Where a design patent application is filed by submitting the specification and drawings prepared in a foreign language pursuant to Paragraph 3 of Article 127, a correction of incorrect translations shall not go beyond the scope of disclosure in the foreign language documents as filed.
A correction shall not substantially enlarge or alter the scope of drawings as published.

Our comments:

This article is amended to clearly define the allowable conditions of making correction of a design patent. Since the amended Article 69 for invention patents applies mutatis mutandis to design patents, the provisions of the correction of incorrect translations are also applied to design patent applications.
In addition, the scope of the design patent right shall be determined based on the drawings of the patented design. Once the drawings are published, the patented design is introduced to the public. Therefore, the correction shall not substantially enlarge or alter the scope of drawings as published.

Article 142 (Added)

A design patentee shall not abandon his/her own design patent right without consent of the licensee(s) or pledgee(s).

Article 143 (Amended)

Unless otherwise provided for in this Act, under any of the following circumstances, any person may file an invalidation petition against a design patent with the Patent Authority:
1. Where there is a violation of any of the provisions set forth in Articles 123 through 126, Article 128, Article 129, Paragraphs 1 through 3 of Article 130, Paragraph 3 of Article 133, Paragraph 3 of Article 134, Paragraph 2 of Article 135, Paragraphs 2 through 4 of Article 141, Paragraph 4 of Article 34 applicable mutatis mutandis under Paragraph 1, Article 144, Paragraph 2 of Article 43 applicable mutatis mutandis under Paragraph 1, Article 144 and Paragraph 3 of Article 44 applicable mutatis mutandis under Paragraph 1, Article 144 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 design 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 design 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 133, Paragraph 3 of Article 134, Paragraphs 2 & 4 of Article 141, Paragraph 4 of Article 34 applicable mutatis mutandis under Paragraph 1, Article 144, and Paragraph 2 of Article 43 applicable mutatis mutandis under Paragraph 1, Article 144 of this Act, such invalidation action shall be governed by the provisions applicable at the time of filing the invalidation petition.

Our comments:

1.	The amended article added the following matters to be the grounds for filing an invalidation action against a design patent:
	(1)	In violation of the amended Article 129: the filing requirement of a derivative design patent.
	(2)	In violation of the amended Paragraph 3 of Article 133 and the Paragraph 3 of Article 134: A converted patent application shall not go beyond the scope of disclosure in the specification, claims, or drawings filed for the original patent application.
	(3)	In violation of the amended Paragraph 2 of Article 135: where an amendment is made with respect to any of the Chinese language documents, such amendment shall not go beyond the scope of disclosure in the originally filed foreign language documents.
	(4)	In violation of the amended Paragraphs 2, 3 and 4 of Article 141:
		A.	The correction shall not go beyond the scope of disclosure in the specification or drawings as filed;
		B.	Where a design patent application is filed by submitting the specification and drawings prepared in a foreign language, a correction of incorrect translations shall not go beyond the scope of disclosure in the foreign language documents as filed, and
		C.	A correction shall not substantially enlarge or alter the scope of drawings as published.
	(5)	In violation of the amended Paragraph 1 of Article 144: A divisional patent application shall not go beyond the scope of contents disclosed in the specification, claims, or drawings filed for the original patent application. An amendment of any of the Chinese language documents stated in the preceding paragraph shall not go beyond the scope of disclosure of the foreign language documents originally filed.

Article 147 (Added)

With respect to the foreign language documents submitted in accordance with Paragraph 3 of Article 25, Paragraph 3 of Article 108, and Paragraph 3 of Article 127, the competent authority shall promulgate regulations governing the limitation of foreign language categories and other matters shall be prescribed by the competent authority.

Our comments:

According to the present law, where the accompanied specification and drawings initially submitted are written in a foreign language, and the Chinese version thereof are submitted within a given time limit fixed by the Patent Authority, the date of submission of the foreign language version shall be regarded as the filing date of that patent application. However, since there is no limitation of the foreign languages presently, it’s hard for the examiners to judge whether the correction goes beyond the scope of disclosure in the foreign language documents as filed. Therefore, it’s necessary for the TIPO to make regulations governing the limitation of foreign language categories and other related matters.

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

Trademark

Ⅰ.

The TIPO held seminars for introducing the new trademark official fees effective on February 1, 2011 and other important practices for trademark examination

The TIPO held seminars in four major cities in Taiwan in March for introducing:

The details about the operation of the new “Examination Standard of Retailing Services” in Int’l class 35:

Retail services shall refer to the activity of bringing together, for the benefit of others, of a variety of goods, enabling consumers to conveniently view and purchase those goods, including selling one's own products or others. Such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, e.g. through web sites or television shopping programs.

In addition to defining the meaning of “retailing services” and some specific descriptions which do not belong to “retailing services” in detail, the TIPO particularly pointed out the following points:

(1)	It’s not necessary to designate the specific goods for retailing in detail. For example, if “retailing services for cosmetics” is designated, it’s not necessary to designate the specific items “lipstick, eye shadow, lotion, creams…etc.”.
(2)	Since the business styles of "retail of general goods" and "retail of specific goods" are different, it would not be possible for an applicant to operate the businesses of "retail of general goods" and "retail of specific goods" at the same time. Therefore, when an application designates the services of both "retail of general goods" and "retail of specific goods", the examiner may require the necessary explanation from the applicant.
(3)	If the trademark owner uses the trademark that identifies retail services on goods or their packaging or containers, such use is not accepted as a kind of trademark use on retail services but is regarded as promoting such goods.

The “new trademark official fees” which were announced and effective on February 1, 2011:

For an application covering Classes 1 through 34, NT$3,000 per class covering 20 items or fewer of designated goods, NT$200 per additional item in excess of 20 items in one class.

For an application covering Classes 35 through 45, NT$3,000 per class. When designating the “retail services” in Class 35, there will be additional fee NT$500 for each item of retail service in excess of five in Class 35.

When filing for trademark registration in electronic format as provided under Article 14 of the Act, the filing fee referred to the preceding paragraph shall be reduced NT＄300 per application. If all of the designated goods or services are adopted from the reference descriptions of goods or services shown in the electronic filing system, further NT$300 per application will be reduced.

The fee for a renewal application:
1.For renewal of a trademark or collective trademark, NT$4,000 per class.
2. For renewal of a collective mark or certification mark, NT$4,000 per registration.
If a renewal application is withdrawn before the issuance of the notice of allowance for renewal, the refund of official fee may be requested.

We herewith summarize some important examples of calculating the items of goods or the items of retailing services:

Examples of goods:

(1)	Cars and their parts: Two items of goods.
(2)	Cosmetics, namely lipstick, eye shadow, lotion and creams” –Five items of goods.
(3)	Cosmetics, specially lipstick, eye shadow, lotion and creams” –Five items of goods.
(4)	Cosmetics, including lipstick, eye shadow, lotion and creams” –Five items of goods.
(5)	Polish for furniture and flooring: Two items of goods.
(6)	Process or semi-processed common metals: Two items of goods.
(7)	Unprocessed plastics in the shape of powder, granular or paste: Three items of goods.
(8)	Electronic or non-electronic typewriter: Two items of goods.
(9)	Pudding (Pudding powder): Two items of goods, because “pudding” and “pudding powder” are different goods.
(10)	Solid carbon dioxide (dry ice): One item of goods, because they direct to the same goods.

Examples of services:

(1)	The retailing and wholesale services for cars and their parts: Two items of services.
(2)	The retailing and wholesale services for computer software, hardware and the peripheral apparatus: Three items of services.
(3)	The retailing services for clothing; the wholesale services for clothing: One item of service, because “retailing” and “wholesale” are regarded as the same kind of services.
(4)	The retailing services for clothing, shoes and bags through mail-order, internet or television order: Three items of services, because the items are calculated based on the kinds of goods in the retail services but not the ways of operating the retail services.
(5)	Polish for furniture and flooring: Two items of goods.
(6)	Process or semi-processed common metals: Two items of goods.
(7)	Unprocessed plastics in the shape of powder, granular or paste: Three items of goods.
(8)	Electronic or non-electronic typewriter: Two items of goods.
(9)	Pudding (Pudding powder): Two items of goods, because “pudding” and “pudding powder” are different goods.
(10)	Solid carbon dioxide (dry ice): One item of goods, because they direct to the same goods.

The legal opinions of the Intellectual Property Court about trademark infringement cases and their applied regulations by the subjects of “trademark infringement cases” and “trademark reasonable use”:

(1)	The sale of stocks after the expiration of the license is not deemed infringement of the trademark right, because those goods are genuine ones.
(2)	The parallel import of the genuine cloth with “HELLO KITTY” logos having no alteration, extra work or transformation, is deemed having obtained consent by the trademark proprietor. However, when the cloth is made into masks, it will cause the consumers mistaking the source of those goods and be deemed using other’s trademark in bad faith and with intent to infringe the trademark rights.
(3)	The use of one’s own trademark before it is finally invalidated is not deemed illegal.
(4)	When the fake products are used as the free gifts but not for marketing purpose of trademark on goods or services, such use is not deemed the efficient “use of trademark” so will not constitute the trademark infringement.
(5)	When claiming for damages, a trademark right holder may claim the damages in an amount equivalent to 500 to 1,500 times the unit retail price of the infringing goods according to Article 63 I (3) of the current Trademark Act. The draft of the Trademark Act will amend this article as “…, a trademark right holder may claim the damages in an amount no more than 1,500 times the unit retail price of the infringing goods” so that the Court will not be bound to at least punish the infringer 500 times the unit retail price of the infringing goods.
(6)	According to Article 30 I (3) of current Trademark Act, where, prior to the filing date of a registered trademark, a person has been using bona fide an identical or similar trademark designating on the identical or similar goods or services, it shall be free from the capacity of trademark rights of a person. However, the aforementioned only is applicable to those goods or services on which such trademark has already been in use. Such limitation is just made to the scope of goods or services on which such trademark has already been in use, but not to the regions or the size of business. It means that the person is allowed to continuously open new branch stores to extend the business as long as the goods or services on which such trademark is used do not go beyond the original scope.

(Source: TIPO’s News updated on March 18, 2011)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=5141)

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