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Taiwan Legislative Yuan passed the draft amendment to the Patent Act

[ December 2011 ] >Back
Patent
 
I. Taiwan Legislative Yuan passed the draft amendment to the Patent Act
   
  It has been over eight years since the Patent Act was last amended in February 2003. On November 29, 2011, the Legislative Yuan passed the draft amendment to the Patent Act proposed by the Executive Yuan. It is estimated this Act will come into force in one year after its promulgation by the President. The main points of the amendment are as follows:
   
  1. The applicant for the patent may claim grace period for disclosing his/her invention in any kind of printed publication by himself/herself within 6 months before the filing date. The printed publications are not limited to academic publications.
     
  2. Introducing the “reinstatement of rights” mechanism, whereby applicants or patent owners who lost their patent rights because they unintentionally failed to claim priority rights at the time of application or failed to pay patent annuities on time may apply for reinstatement of rights.
     
  3. Providing the claim(s) and abstract are independent from the description.
     
  4. Deleting the time limit for applicants wishing to amend applications; however, after TIPO has issued an office action, the applicants can only amend their applications within the time limit specified in the said action. Furthermore, after TIPO has issued an office action, as it deems necessary, it may issue a final office action. A patent applicant can only amend claims in any of the following manners within the time limit specified in the said final office action: (a) to delete claim(s); (b) to narrow the scope of claim(s); (c) to correct erroneous description; (d) to clarify unclear description.
     
  5.
Allowing divisional applications to be filed within 30 days from the date on which an approval decision for the original patent application was issued.
 
     
  6. Amending conditions that were excluded from the scope of patent right, including private acts that are for non-commercial purposes, acts that are necessary for obtaining drug regulatory approval in Taiwan and abroad, and adoption of the international exhaustion principle.
     
  7. Removing the minimum two-year threshold requirement for applying for extension of patent terms of pharmaceutical and agrichemical related invention patents; clarifying that patentee may apply for only one extension of the patent term of the said invention patent based on the first regulatory approval, and the said regulatory approval can be used for seeking patent extension only once.
     
  8. Amending the requirements for applying compulsory licenses, the condition “failure to reach a licensing agreement with the patentee concerned under reasonable commercial terms and conditions within a considerable period of time” becomes a prerequisite to apply for compulsory license for public non-commercial use or exploiting dependent patent involving an important technical advance of considerable economic significance; Providing TIPO shall determine the amount of compensation together with granting compulsory licenses.
     
  9. Compulsory license may be granted to produce pharmaceutical products for export to developing or least-developed countries to solve their public health crisis.
     
  10. Revising the patent invalidation system, including abolishing examination by ex officio action, allowing invalidation actions to be filed against part of claims, combining procedure for invalidation actions and corrections, as well as combining decisions for invalidation actions and corrections.
     
  11. Clarifying the infringer’s intentional or negligent act as necessary for the patentee to claim the damages of patent infringement; revising the methods of calculating damages; and clarifying where no patent marking is made, evidence shall be produced when claiming damages to prove that the infringer has had knowledge or may have knowledge with respect to the fact that the said article is under patent protection.
     
  12. Adding provisions that allow the same applicant to file an invention patent application and a utility model patent application for the same creation on the same date. After TIPO determines the invention patent is allowable, it will notify the applicant to select one patent within a specified time limit. Where the applicant selects the invention patent, the utility model patent shall be deemed non-existent ab initio.
     
  The original amendment to the Patent Act proposed by the Executive Yuan was to provide overall patent protection to animals and plants. However, since agreement could not be reached at the current stage, expanding patent protection for animals and plants is not included in this amendment.
   
  The amendment to the Patent Act covers many changes to Taiwan’s patent system. The date on which this Act takes effect shall be decided by the Executive Yuan to allow all sectors to gain a thorough understanding of the new system and to adapt to its operation. TIPO has begun to prepare corresponding measures. Please be assured that we will keep you informed as soon as the amended Patent Act is effective in Taiwan.
   
 
(Source: TIPO News dated November 30, 2011)

 

Trademark
 
I. It is not a “reasonable excuse” of non-use for a trademark by the reason that a trademark has been involving in pending opposition proceedings for years
   
  The following trademark was opposed by a third party during its publication period in 2006 and the final official decision has not yet been issued until now.
   
 
   
 
During the opposition proceedings, the opponent further filed a Cancellation application against the above trademark by the ground of non-use for three years since its publication date according to the Trademark Act, Article 57.1(2) in 2009. The above trademark was successfully cancelled according to the official decision issued in 2010. The registrant filed an administrative relief against the TIPO’s decision by the reason that it is a “reasonable excuse” of non-use for the above trademark since it has been involving in pending opposition proceedings for years. 
 
According to the Judgment of the Supreme Administrative Court for the above case (No. 996 issued in 2011), the “reasonable excuse” refers to those situations which should not be imputed to the registrant, such as the stop of ocean shipping, the shortage of raw material or natural disasters which bring serious damage to the manufactory, so that the manufacture and selling are stopped for a period of time, etc. Furthermore, the so-called “the situations which should not be imputed to the registrant” should be the situations which cannot be expected or avoided by the attention of general people according to objective standard, but not the situations subjectively interpreted by the registrant. Such interpretation was shown in the legal precedents early in 1966 and 2008 and also stated in the “Interpretation of the Trademark Act” in Taiwan.
 
Although the registrant argued that they could not invest and sell the products bearing the said trademark thoughtlessly before the final official decision of the opposition since it involved a very big amount of cost, the Judgment stated that there are several ways of using a trademark instead of manufacturing and selling the products only, for example, “the utilization through means of two-dimensional graphic, audio and visual digitization, electronic media, or other mediums to sufficiently make relevant consumers recognize it as a trademark (Trademark Act, Article 6)”. Therefore, it is not a “reasonable excuse” of non-use by the reason that a trademark has been involving in pending opposition proceedings for years.
 
In addition, the registrant argued that the opponent’s action of filing the Cancellation application during the opposition proceedings violated the principle of good faith. The Judgment stated that the Cancellation and Opposition systems belong to different public reviewing systems. Their requirements and purposes are different. Anyone can file an opposition application and also a cancellation application against the same trademark, if needed. So, the opponent did not violate the principle of good faith.
   
 
(Source: TIPO Newsletter issued on December 5, 2011)
   
II. Whether keyword advertising constitutes infringement or not?
   
 
We learnt recently that the legal opinions about whether “keyword advertising” constitutes infringement between the Fair Trade Commission and the Intellectual Property Court in Taiwan are different. 
 
The Fair Trade Commission follows the Fair Trade Law and focuses on whether the “keyword advertising” constitutes unfair competition or infringements of commercial goodwill by using other’s marks or trademarks to increase consumers’ visit to one’s website. So, when one uses other’s trademark on his/her website as “keyword advertising”, it will violate Fair Trade Law.
 
On the other hand, the Intellectual Property Court follows the Trademark Act in Taiwan and focuses on whether the “keyword advertising” violates the Trademark Act, Article 6 about the use of a trademark:
 
Article 6
The term, use of trademark, as referred to in this Act connotes the utilization for marketing purpose of trademark on goods, services or relevant articles thereof, or the utilization through means of two-dimensional graphic, audio and visual digitization, electronic media, or other mediums to sufficiently make relevant consumers recognize it as a trademark. 
 
If the “keyword advertising” is not used as a trademark on a website, it would not violate the said Trademark Act.

 

Copyright
 
I. How a creator proves the true ownership of his/her copyright
   
 
Taiwan became a member of the World Trade Organization (WTO) on January 1, 2002. Under the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), member countries are obligated to protect works of the nationals of other members. Therefore, if the client is a citizen of the WTO members, their works are entitled to protection in Taiwan due to the reciprocal principle.  In addition, Taiwan follows the principle of copyright protection upon creation. According to Article 10 of the Copyright Act in Taiwan, a creator enjoys copyrights as soon as a work is completed. Copyright registration is not a prerequisite for obtaining copyright. In other words, no formal application is necessary to obtain copyright. 
 
Thus, the most important thing is that the creators must be able to prove that they are the owners of the copyrights.  Since copyrights are private rights, copyright owners have to bear the burden of proof of the existence of their rights so they should preserve and keep material from the creative process or release of a work or other material relating to their rights to a work, to serve as evidence of their rights. 
 
To avoid the difficulty of submitting evidence, in Taiwan, the creators have some ways to prove their ownership of the copyright, such as sending legal attest letters to the creators themselves,  making backup copies of the works in CD-R or DVD-R, leaving their works with a certain organization or a private organization or publishing their works to the public. In addition, the creators can bring their works and relevant material to a notary public in person and ask the  notary public to  notarize the date of creation and the ownership of the copyright.  In other countries, clients may secure additional copyright protection by way of Statutory Declaration, or an official document (usually stamped by a Notary Public) proving the date of creation and the ownership of the copyright. 
 
However, since anyone may send legal attest letters, make backup copies for the works or ask a  notary public to notarize the date of creation and the ownership of the copyright, such kinds of documents may still be deemed indirect evidence. It is advisable to preserve and keep material from the creative process, such as the drafts, sketches and the discussions with dates, according to the Article 13 of the Copyright Act in Taiwan:
“Where a person's name or a pseudonym familiar to the public is represented in a normal way as the author on the original of a work, or on a published copy of the work, or in connection with a public release of a work, the person shall be presumed to be the author of the work.
The provisions of the preceding paragraph shall apply mutatis mutandis to presumptions concerning the date and place of publication of a work as well as the ownership of economic rights therein.”
   
 
(Source: TIPO Newsletter issued on October 05, 2011)

 

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