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The Partial Amendment to The Patent Act Has Been Effective on June 11, 2013

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Patent
 
I. The Partial Amendment to The Patent Act Has Been Effective on June 11, 2013
  On May 31, 2013, the amended Articles of the Patent Act were passed by the Legislative Yuan. These amended articles have been promulgated by the President and effective on June 11, 2013. We herewith list the amended Articles of the Patent Act with our comments as follows:
 
 
1.  Article 32:  One creation applied for invention patent and utility model patent
 

        Where an applicant files an invention patent application and a utility model patent application for the same creation on the same date, the applicant shall make a declaration with respect to this matter respectively when filing either patent application. If the utility model patent application has been granted before a decision of admission is issued on the invention patent application, the Specific Patent Agency shall notify the applicant to select one patent application within a specified time limit. The invention patent application shall not be granted if the applicant fails to make such a declaration when filing or make the selection within the specified time limit.

        Where the applicant selects the invention patent application according to the provision set forth in the preceding paragraph, the utility model patent right shall be deemed non-existent ab initio extinguished from the date of publication of the invention patent application.

        The invention patent application shall not be granted if the utility model patent right has extinguished or has been invalidated before a decision is issued on the invention patent application.
 
  ● JAW-HWA’s comments: The amended article requires that an applicant shall make a declaration about the matter of filing an invention patent and a utility model patent for the same creation on the same date in both application forms respectively when filing. If the applicant fails to make the said declaration when filing or make the selection within the specific time limit, the invention patent application shall not be granted. In addition, the amended article allows the utility patent right being extinguished from the date of publication of the invention patent application instead of being non-existent at initio in order to provide the better protection to people’s patent rights.
 
 
2.  Article 41: Effect of the laying open of application
 
 
        After the laying-open of an invention patent application, where the applicant has given a written notice to a person indicating the content of the invention claimed in the patent application, the applicant may, after the publication of the said patent application, claim appropriate compensation against the said person if he/she continues to exploit the invention commercially after receiving the notice and prior to the publication of the said patent application. 

        A claim referred to in the preceding paragraph can also be made where a person who knows that an invention patent application has been laid open but continues to exploit the invention commercially prior to publication of the patent application. 

        The right to claim compensation as provided in the preceding two paragraphs does not affect the exercise of other rights. If an invention patent application and a utility model patent application for the same creation are filed on the same date as set forth in Article 32, and the utility model patent right has been obtained, the applicant shall choose to either claim compensation or exercise the utility model patent right.

        The right to claim compensation as set forth in Paragraph 1 and Paragraph 2 shall be ceased if it is not exercised within two years from the date of publication of the said invention patent.
 
 
● JAW-HWA’s comments: Since, according to the amended Article 32, the utility patent right shall be deemed extinguished from the date of publication of the invention patent instead of non-existent at initio, the principle of right succession is adopted.  Therefore, an applicant should be confined to either claim compensation for the invention patent application or exercise the utility model patent right in order to avoid claiming double compensations.
 
 
3.  Article 97 Calculation of damages
 
          Damages claimed in accordance with the preceding Article may be calculated according to any of the following methods:

   1. the method provided in Article 216 of the Civil Code; patentee may claim damages based on the amount of the balance derived by subtracting the profit earned through exploiting the patent after infringement from the profit normally expected through exploiting the same patent, if no method of proof can be produced to prove the damage suffered;

   2. the profit earned by the infringer as a result of patent infringement;

   3. the calculation based on the equivalent reasonable amount of royalty that may be collected from exploiting the invention patent under licensing.

        Pursuant to the preceding paragraph, in the case of infringement of an invention patent with intent, the court may, at the request of the injured party and by taking the circumstances of the infringement into consideration, award an amount greater than the calculation of damages as set forth above, provided that the amount shall not exceed three times the amount of the proven damages.
 
 
● JAW-HWA’s comments: It has been a worldwide trend to introduce “punitive damages” to the Intellectual Property Rights, but doesn’t merely indemnify the damages. According to the old Patent Act, the amount of compensation should be equal to the amount of royalty from exploiting the invention patent under licensing. If so, the infringers would not seek for licenses with the patentees but prefer to infringe others’ patents. Under the new Patent Act, it is reasonable to make a higher amount of compensation if the infringement is made on purpose. Therefore, the “punitive damages” is included to the Patent Act by the amendment this time. 
 
 
4.  Article 116 Presentation of technical report
 
        When exercising a utility model patent, the patentee shall not proceed with a warning without presenting a utility model patent technical report as warning.
 
 
● JAW-HWA’s comments: According to the new Patent Act, it is a requisite to present a utility model patent technical report when sending a warning letter to a third party for one’s utility model patent rights.
 
 
5.  Article 159 Date of implementation
 
 
        The date on which this Act takes effect shall be decided by the Executive Yuan.
The effective date of the articles of this Act amended on May 31, 2013 shall come into force from the date of promulgation.
 
 
● JAW-HWA’s comments: The above amended Articles of the Patent Act have been promulgated by the President and effective on June 11, 2013.


 
 
(Source: TIPO Newsletter, Issue No. 84, Date: June 5, 2013 & TIPO Announcement on June 11, 2013)
 
(http://www.tipo.gov.tw/ct.asp?xItem=457665&ctNode=7452&mp=1)
   

 

Trademark
 
I. The Judgment of Similarity of Trademarks – An Observation of The Main Part of The Logos (No. 48/ 2012 of the IP Court)
 

 

  
 
 
  (The trademark in dispute)                 vs.  (The trademarks cited as the bases in the Invalidation)

 
          The complainant filed the trademark in dispute designating the goods of dolls and toys and being allowed for registration (Reg. No.1313000) by the TIPO (the defendant). A third party filed an Invalidation application against the trademark in dispute based on the cited trademarks on the grounds of the old Trademark Act, Articles 23.I.(12), (13) and (14). Through the examination of the TIPO, the trademark in dispute was invalidated on the ground of the old Trademark Act, Article 23.I.(13). The complainant’s petition of Appeal up to the MOEA was failed, so the complainant further raised a lawsuit with the IP Court against the TIPO’s decision of invalidation.

        According to Article 23.I.(13) of the old Trademark Act (Article 30.I.(10) of the current Trademark Act), a trademark application shall be rejected if the proposed trademark is identical or similar to a registered trademark or a proposed trademark of a preceding application that is designated for use on identical or similar goods or services thereof and hence likely to cause confusion to relevant consumers. The cited trademarks used on toys, stationary and clothing were well-known marks, so the cited trademarks owned broader protection on their trademark rights. The trademark in dispute was deemed similar to the cited trademarks designating the same or similar goods. It might mislead the consumers to believe that the goods bearing the trademark in dispute were from the same source or the complainant was an affiliated company, or has license relationship, franchise relationship or the like with the owner of the cited trademarks.

        The complainant claimed that the trademark in dispute and the cited marks were different in color, gesture, number and words, so the overall appearance, concept idea and pronunciation sound of the trademarks were different. The consumers would not be misled by the source of the goods from both trademarks. The original decision of the TIPO dissected the trademarks when judging the similarity of the two trademarks which violated the rules that the trademarks must be considered in their entirety.

        However, in the opinions of the IP Court, although the similarity of trademarks should be judged in their entirety by a separate comparison, when the specific part of a trademark could attract other’s attention and was more distinctive, the comparison of two trademarks could be dissected on the distinctive part of the trademarks (Case Nos. 265, 277 and 1144 in 1966, 1967 and 1984). Therefore, when the specific part of a trademark was similar to another mark and caused a critical influence on the judgment of the similarity of two marks, they could not be deemed dissimilar (Case No.180 in 2000).

        In this case, the features of the two trademarks were both the bears with round faces and soft shapes, the dark dots of their eyes, white color on the noses and mouths, and the white bellies. The similar designs on their ears, faces, bodies, arms and legs were the specific parts of two marks which could attract the attention of consumers. The similarity of the two trademarks was not influenced by the different color, gesture, number and words thereon. So, the trademark in dispute was deemed confusedly similar to the cited trademarks.
 
 		    
  (Source: TIPO Newsletter, Issue No. 80, Date: February, 2013)

(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=6494)

 

 

 

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

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