Ⅰ.

The Patent Prosecution Highway (PPH) pilot program between Taiwan Intellectual Property Office (TIPO) and the United States Patent and Trademark Office (USPTO)

The PPH program between TIPO and USPTO launched on September 1, 2011 for a trial period of one year. 

Applicants of invention patents that are first filed with USPTO and later filed with TIPO claiming priority to corresponding US applications and have requested for Substantive examination but the TIPO has not issued the first examination reports on the applications, may submit a request for accelerated examination with TIPO, provided the examination result from USPTO contains at least one claim determined to be patentable and vice versa.

TIPO’s own Accelerated Examination Program (AEP) allows applicants to apply for expedited examination with their approved US applications. On the other hand, the PPH pilot program requires the applicants to amend their scope of claims with TIPO to be the same or narrower in scope than the claims approved by the USPTO, and all subsequent amendments must also satisfy this requirement. Therefore, applying for expedited examination under PPH is stricter than that of AEP which will result in a more efficient and faster examination.

On the other hand, if your clients’ invention patent applications in Taiwan do not satisfy the conditions for applying for expedited examination under PPH, the clients may still take advantages of the AEP system to expedite the examination instead with a copy of Notice of Allowance and claims to be or have been granted and published in a corresponding invention in any foreign country, mostly in the United States, Japan, China or European Patent Office according to the statistics published by the TIPO.  

Should you need the information about the PPH or AEP system, please feel free to contact us.

(Source: TIPO News dated August 22, 2011)
(http://www.tipo.gov.tw/en/News_NewsContent.aspx?NewsID=5420)

Ⅱ.

The Intellectual Property Court will not take into account any new evidence supplemented by the TIPO at the stage of appeal or administrative action if the appeal or administrative action is not arisen for a cancellation or revocation of a registered trademark or patent (a written judgment No.172 made by IP Court in 2010)

Article 33 of the Intellectual Property Case Adjudication Act prescribes that in an administrative action concerning cancellation or revocation of a registered trademark or patent, the Intellectual Property Court shall take into account any new evidence submitted on the same grounds for the cancellation or revocation prior to the end of the oral argument. 

The “grounds” in Article 33 refers to the grounds for the cancellation or revocation excluding the grounds for patent application. Thus, it means that only new evidence submitted for the cancellation or revocation, but not any other cases, will be considered by the IP Court. 

In this case, the TIPO rejected the Plaintiff’s invention patent application (hereinafter “the patent at issue”) because it decided that the proposed invention could be easily accomplished by a person having ordinary knowledge in the art based on one prior art (Citation 1) cited during the examination in the TIPO. Then, the TIPO sustained their unfavorable decision in the re-examination by Citation 1 and a supplementary document, Page 8 of the master thesis published in July 2004 by Department of Mechanical and Marine Engineering, NTOU, but didn’t mention the supplementary document in the written decision of re-examination.

At the Appeal stage, the TIPO further added the following evidence when submitting the response:

(1)

(2)

(3)

(4)

At the stage of the Administrative action, the TIPO further supplemented pages 515, 522, 523, 560 and 562 of a book named during the oral argument even though they had confirmed no evidence to be submitted in the preparatory proceeding. 

In the TIPO’s opinion, the additional data above depended on the principal evidence, i.e. Citation 1, and were used to strengthen and assure the admissibility and probative value of Citation 1. Thus, the additional data above were not new evidence and should be taken into account in the Administrative action. 

However, the IP Court held different point of view. When determining whether an invention has inventive step, it is necessary to take the following factors as a whole into consideration:

(1)

(2)

(3)

(4)

When the TIPO determined that the proposed invention lacked inventive step by combining Citation 1 and the prior arts disclosed in several cited references, it should be regarded as independently “new evidence” but not merely corroborating evidence. 

Owing to the fact that the TIPO never informed there were other cited references besides Citation 1 in the office actions and the written decision of re-examination they issued, it certainly should not allow them to add independently “new evidence”, i.e. combination of Citation 1 and the prior arts disclosed in several cited references after the decision made by the TIPO was affirmed. Consequently, the IP Court would not consider the independently new evidence either.

(Source: TIPO Newsletter issued on September 05, 2011)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=5438)

Ⅰ.

“Trade dress” of the mobile phone is not distinctive enough to be registered as a trademark (a written judgment No.221 made by IP Court in 2010)

The trademark at issue

The Plaintiff filed the trademark at issue “iPhone trade dress Icon Screen (color)” on July 23, 1999, designating on use of products with multifunctional portable digital electronic equipments in I.C. 09, namely the appearance and APPs shown on the screen of iPhone mobile phone. 

The judge of IP Court is of the opinion that the trademark at issue merely consisting of the appearance and APP shown on the screen of a mobile phone is not distinctive enough to make relevant consumers recognize it as a sign identifying the source of the goods because of the following reasons:

1.

Accordingly, the distinctiveness of the appearance and icon screen of a mobile phone is too low to make relevant consumers recognize it as a sign identifying the source of the goods, so the appearance and icon screen of a mobile phone cannot be registered as a trademark in Taiwan.

Ⅱ.

A case demonstrates how a trademark is not likely to mislead the public with respect to the place of origin of the designated goods (a written judgment No.1324 made by the Supreme Court in 2010)

The trademark at issue

In this case, the appellant is an internationally famous manufacturer and distributor of footwear and clothing. Since the appellant’s establishment in 1966, they have been using the trademark at issue as identification to every product they manufactured. Besides, early in 1987, the appellant has obtained registrations of the trademark at issue in the U.S., Canada, EU, Singapore, Hong Kong, Korea and Philippines, etc. According to the evidence submitted by the appellant, the trademark at issue has been recognized as a well-known trademark by relevant consumers of footwear and clothing goods. This fact was affirmed by the original judgment made by IP Court. 

Article 23-1(11) of the Trademark Act prescribes that a trademark may not be registered if it is likely to mislead the public with respect to the nature, quality, or place of origin of the designated goods or services.  Whether a trademark is likely to mislead the public with respect to the nature, quality, or place of origin of the designated goods or services should be judged based on the observation of the entire trademark including the appearance, concept or pronunciation, the impression given to the consumers, the association between the trademark and designated goods or services, the market share of the applicant's goods or services in the market and the perception of relevant local consumers on the designated goods or services.

The legislative purpose of Article 23-1(11) is to prevent consumers from buying products because of being misled by a trademark with respect to the nature, quality or place of origin of the products. This is different from the legislative purpose of Article 23-1(13) and (12), which is to prevent a trademark from being confused with another. 

As being a well-known trademark, even if the trademark at issue consists of a word “SWISS” with respect to the place of origin of the designated goods, now that consumers have recognized the trademark at issue as a sign identifying the source of the goods or services, the possibility to cause confusion about the place of origin of the goods to consumers merely by a word “SWISS” would be low. 

Moreover, the trademark at issue consists of not only the word “SWISS”, but also a letter “K” and a device of shield with oblique lines. What the consumers recognize is the entire trademark but not merely the word “SWISS”.  Consequently, it is unlikely to cause the public to misidentify or form a mistaken belief about that their goods are from Switzerland.