Loosening the criteria on correction matters

Loosening the criteria for substantially altering the scope of the patent claims

Adding referable decisions of Courts

In addition to adding and deleting some sample cases, the TIPO also add referable decisions of Courts, including a) decisions on correction matters, b) decisions on specification or drawings that are beyond the scope of disclosure, and c) decisions on claims that are substantially enlarged or altered.

Article 151 II (Added)

For applications for correction(s) and invalidation petitions which have been filed but for which irrevocable examination decisions have not been rendered prior to the implementation of the yy/mm/dd amendment to this Act, the amended Patent Act shall govern.

Our comments:
 
In the amendment to the current Patent Act, there are some additions and alterations to the procedures of corrections and invalidation petitions, so it is necessary to clearly stipulate that for those applications for corrections and invalidation petitions which have filed before the amendment of the Patent Act but the decisions thereof haven’t been made prior to the implementation of the amendment to this Act, the amended Patent Act shall govern.

For invention or utility model patent applications which have been filed prior to implementation of the yy/mm/dd amendment to this Act with priority claims made in accordance with Article 29, if the prior patent applications have not been published or decisions rejecting these patent application have not become irrevocable, Paragraph 1 of Article 30 shall apply.
For invention patent applications which have been filed prior to the implementation of the yy/mm/dd amendment to this Act but for which examination decisions have been rendered, if the time period stated in Item 2, Paragraph 2 of Article 34 has not expired, Item 2, Paragraph 2 and Paragraph 6 of Article 34 shall apply.

Provisions regarding partial designs of articles as stated in Item 2, Paragraph 3 of Article 22, Item 2, Paragraph 3 of Article 22 applicable mutatis mutandis under Article 122 and Paragraph 1 of Article 123, as well as Paragraph 2 of Article 123, Item 1, Paragraph 3 of Articles 124, Article 129, and Paragraph 2 of Article 131 shall only apply to patent applications filed after the implementation of the yy/mm/dd amendment to this Act.

Our comments: 

The following augmentations in the draft of amendment to the current Patent Act should be applied only after the amendment enters into force:

Invention patent applications covering animals or plants or major biological methods of producing animals or plants, which have been filed prior to the implementation of the yy/mm/dd amendment to this Act, the Patent Act in effect prior to the amendment shall govern.

Our comments: 

Although Article 24 in the amendment of the Patent Act loosens the limitation for filing invention patent applications covering animals or plants or major biological methods of producing animals or plants filed, these kinds of patent applications should not be granted when they are filed prior to the implementation of the amendment because there is no basis of the grant to such patents in the current Patent Act based on which they are filed.

For invention patent applications that, prior to the implementation of the yy/mm/dd amendment to this Act, were found to violate Paragraph 2, Article 30, for which the deposits are deemed not having been made, and for which irrevocable examination decisions have not been rendered at the time of implementing the amendment to this Act, Paragraph 2 of Article 27 shall apply. For invention patent applications filed with priority claims, if the sixteen (16)–month time period from the earliest priority date has not been expired, Paragraph 3 of Article 27 shall apply.

Our comments:
 
Article 27 in the amendment of the Patent Act loosens the time limit from three months to four months for submission of the Patent Authority document(s) evidencing the deposit and supply the information concerning the name of the depository as well as the date and serial number of the deposit.
Before the amendment enters into force, if one fails to submit the Patent Authority document(s) evidencing the deposit but at the time of implementing this amendment, it is still within four months or within sixteen (16) months after the priority date where priority is claimed under Article 28 in the amendment, it is still available to submit the documents according to the Paragraphs 2 and 3 of Article 27 in the amendment.

The amended Trademark Law opens up any signs sufficient to identify the source of goods/services are eligible to apply for trademark registrations, such as Dynamic Marks and Hologram marks.

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.

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

The amended Trademark Act added the condition that the consent agreement of co-existence should be made under the premise of no obvious impropriety to each party.

The amended Trademark Act allows the unintentionally late payment of registration fee within six months after the expiry of the official due date under some premises.

When the trademarks which are cited as the bases for Invalidation or Revocation applications have been registered for three years, the applicants of the Invalidation or Revocation applications should submit the evidence of use of the said trademarks happened within three years before the institution of the Invalidation or Revocation applications.

If the trademark right holder claims for damages, it is necessary to prove that the infringement is arisen with the intent or negligent act by the infringer subjectively. The amended Trademark Act also deletes the minimum damages claimed in an amount of equivalent to 500 times the unit retail price of the infringing goods and adds that it is available to claim damages based on the reasonable license fee.

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. Using a registered trademark as the company name, trade name or domain name will no longer be deemed a trademark right infringement.

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.

The amended Trademark Act explicitly stipulates the regulations of Certification and Collective trademarks. Also, it adds the regulation about the criminal punishment for infringement of Certification trademarks.