JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

When a third party applies for reviewing the file wrappers of a laid-open or published divisional patent application, he/she should also be allowed to review the file wrappers of the original patent application without being subject to the limitations set forth in item 3 (3) of the
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[ August 2013 ] >Back

Patent

I.	When a third party applies for reviewing the file wrappers of a laid-open or published divisional patent application, he/she should also be allowed to review the file wrappers of the original patent application without being subject to the limitations set forth in item 3 (3) of the (Main points for Applying for Reviewing Patent Documents).
	After the implementation of new Patent Act on January 01, 2013, the file wrappers of a divisional patent application do not contain the specification of the original patent application. However, when a third party applies for reviewing the file wrappers of a laid-open or published divisional patent application, it would be more unabridged if the specification of the original patent application can be contained. For example, when a third party would like to file an invalidation application against a divisional patent application after it is published based on the reason that the divisional patent application has extended beyond the scope of content of the description, claim(s), or drawing(s) of the original patent application, he/she has to use the specification, etc. of the original patent application as the basic data alleged in the invalidation. Therefore, it is necessary to allow the third party to review the file wrappers of the original patent application simultaneously while he applies for reviewing the file wrappers of the divisional patent application which has been laid-open or published. Even though the original patent application has been withdrawn, hasn’t been accepted or has been dismissed before it is laid-open, the third party is still allowed to review the same.
	Source: TIPO News published on June 07, 2013 (http://www.tipo.gov.tw/ct.asp?xItem=456120&ctNode=7127&mp=1)
II.	The deadline set for supplementing the Certified copy of the first patent application is a peremptory period
	According to Article 27 I of the previous Patent Act, where an applicant has duly filed his/her first patent application in a foreign country, which reciprocally allows ROC nationals to claim patent priority, or with any member of the World Trade Organization (WTO), the applicant may claim priority in respect of his/her ROC patent application if the ROC patent application for the same invention is filed within twelve months from the filing date of the said first patent application. When claiming priority in accordance with the Article 27 I, an applicant shall simultaneously make a declaration with respect to the following when filing his/her patent application. Within four months from the filing date, the applicant shall submit a certified copy of the first patent application issued by the foreign patent authority under the preceding paragraph. (Article 28 of the previous Patent Act) According to the foregoing articles, the applicant shall submit the certified copy of the first patent application to the TIPO within four months from the filing date. Violating the provisions set forth in the preceding paragraphs, it shall cause the deprivation of the priority right, which shows that such a four-month period is the rule about the substantial condition for claiming priority. It is a period of substantial rights in public law for exercising the right to apply for a patent instead of a period within which a specific action should be taken during the litigation proceedings. Where a peremptory period is delayed, unless it is available to request for reinstatement according to Article 17 II of the previous Patent Act, it is not allowed to submit the document on a belated basis because of any other reasons.
	Article 17 II
	If the delay is caused by natural calamity or other cause(s) not attributable to the applicant, the applicant may, within thirty days after cessation of such cause, request with the Specific Patent Agency stating the cause(s) for delay and requesting for reinstatement. An application for reinstatement shall not be accepted if delay has exceeded one year from the expiration of a statutory time limit.
	Remark:
	After the new Patent Act was effective on January 01, 2013, the applicant shall submit a certified copy of the first patent application within sixteen months from the earliest priority date (ten months for a design patent application) according to Article 29 II and Article 142 of the new Patent Act.
	(Source: TIPO Newsletter No.85 issued on July 05, 2013) (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep7464.htm)

Trademark

I.	It will not constitute an infringement of trademark rights before a license thereof is formally terminated.
	A trademark license is a kind of continuous contract. When the duration of license is set in a license contract, once the duration is expired, the license is terminated. On the contrary, if there is no duration set for the license, it will be a kind of non-fixed term contract. For the non-fixed term contract, there is no principle norm about how to express the intention of termination and its legal effect. However, since the termination of a non-fixed term license contract is to express the intention of termination happened in the future, if there is no clause for termination stipulated in the license contract, the termination shall not be exercised except as otherwise expressly provided in laws. When a licensee fails to carry out the obligation, and the trademark right holder would like to terminate the license contract one-sidedly, Article 254 of the Civil Code should be analogous to be applied. That is the trademark right holder shall fix a reasonable period and notify the licensee to perform within that period. If the licensee does not perform within that period, the trademark right holder may rescind the contract.
	Civil Code
	Article 254	When a party to a contract is in default, the other party may fix a reasonable period and notify him to perform within that period. If the party in default does not perform within that period, the other party may rescind the contract.
	In the criminal case No.4 from the IP Court in 2013, Company A and Company B constituted a non-fixed term license contract for the trademark rights. Company A issued a Legal Attest Letter to Company B to express its intention of terminating the license contract without reaching a mutual agreement of termination with Company B in advance nor having a legal matter or a clause provided in the contract to terminate the contract. According to the explanation in the preceding paragraph, such a Legal Attest Letter cannot make the license contract be formally terminated. Now that the license contract is not terminated, the licensee’s acts of continuously using the licensed trademark on products should not be deemed as violating any articles of the Trademark Act.
	(Source: TIPO Newsletter No.85 issued on July 05, 2013) (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep7464.htm)

Copyright
I.	Won’t it infringe someone’s copyrights as long as a clear indication of the name or appellation of the author and the source of the work is provided?
	Someone (hereinafter “A”) is fond of photography and often takes pictures outdoors with people having the same habit and then the photographers post all their photographic works on a photography forum where they may learn from one another by an exchange of views. “A” also periodically posts his photographic works on his blog. One day, the photographic topic is what “A” is most interested in, so he considers forwarding all pictures with relation to the topic taken by others and posted on the photography forum to his own blog to share with people visiting his blog. “A” will clearly indicate the names or appellations of the authors and the sources of the works respectively. However, A’s friend doubts whether it surely will not constitute an infringement of copyrights for someone to forward a large number of others’ works with clear indication of the name or appellation of the author and the source of the works to his own blog. Firstly, the pictures taken by a photographer with his own originality belong to photographic works and are protected by copyrights. According to the Copyright Act in Taiwan, forwarding others’ works to the websites may involve the means of public transmission or reproduction of the works. If such use is not a fair use of a work as stipulated in Article 44 to Article 65 of the Copyright Act, the user shall get a license or the consent to use from the economic rights holder of the works in advance, or such use will be deemed as an infringement of copyright and the user shall bear civil and criminal responsibilities thereof. Consequently, it is just the obligation to clearly indicate the name or appellation of the author and the source of a work when the user needs to allege his/her use is a kind of fair use based on the Copyright Act. It doesn’t mean that it will not constitute an infringement of copyrights as long as the clear indication of the name or appellation of the author and the source of the work is provided. Furthermore, it is acceptable to quote others’ works that have been publicly released within a reasonable scope according to Article 52 of the Copyright Act. If “A” merely cites a small quantity of others’ pictures as references and annotations in the photographic book he wrote, it will conform to the meaning of “quote” as stipulated in Article 52 of the Copyright. However, if a work is transmitted through webs, it can reach everywhere of the world. Thus, the chance to regard “forwarding others’ works to the websites” as “fair use” is quite small. If it is necessary to forward someone’s works to the webs, the user had better obtain a license or the consent to use from the economic rights holder of the works in advance for the sake of safety.

	(Source: TIPO Newsletter No.85 issued on July 05, 2013) (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep7464.htm)

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