The Taiwan Intellectual Property Office (TIPO) and our firm will be closed for the Chinese Lunar New Year holidays from January 30 (Thursday) to February 04, 2014 (Tuesday).
[ January 2014 ] >Back| Patents | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| I. | TIPO and JPO Have Implemented the “Priority Document Exchange” (PDX) Program on December 02, 2013. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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On November 5, the Association of East Asian Relations and Interchange Association Japan signed a memorandum of understanding on the PDX program. TIPO and JPO have started the PDX program on December 02, 2013.
Under the PDX, the applicant that has first filed an invention patent or utility model with TIPO (Office of First Filing, OFF) may request an access code with the office and use it to replace paper priority documents and claim priority to the TIPO application at the JPO (Office of Second Filing, OSF). Similarly, the applicant that claims priority to the JPO application at TIPO and provides the JPO-issued access code to TIPO within 16 months after the earliest priority is claimed may be deemed to have provided the priority documents.
To encourage this online procedure, TIPO does not require any fees for requesting an access code. However, please note that the PDX program is not applied to design applications.
After the PDX has been implemented, both offices can directly transmit and obtain electronic priority documents of applications filed bilaterally without wasting time and money on producing their paper version. In turn, this simplified, cross-country request procedure can help the applicant to economize on postage. Moreover, the PDX would enable synchronization of patent-family information by allowing patent examiners to quickly access and review online priority documents from the offices, thereby enhancing examination and administrative efficiency.
Moreover, the program is applicable to applications with priority claimed, which were filed before December 02, 2013 and are still within 16 months after the earliest priority date. For those applications claiming priority to the TIPO applications at JPO, the applicants thereof may request for the access code with TIPO and use it to replace paper priority documents to provide to JPO within 16 months after the earliest priority date and vice versa.
In addition, TIPO has actively provided access codes for those cases applying for priority documents which were filed within 16 months prior to the official implementation of the PDX program. The applicants may look up the access codes via the TIPONet with their existing accounts and passwords directly or through their attorneys. It is not necessary for them to request for the access codes with TIPO.
Remedies for TIPO to fail to obtain an electronic file of the priority document based on an access code provided by the applicant are as below:
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| (1) | If the failure is caused by any grounds not attributable to the applicant, such as breakdown of network transmission or an error in delivering mail, after TIPO eliminates such breakdown and has fulfilled what should be done, it will be deemed that the applicant has submitted the priority document within the statutory time period. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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(2) |
If the failure is caused by grounds attributable to the applicant, such as providing a wrong access code or application number of the basic patent application, TIPO shall inform and request the applicant to provide the correct access code or application number, or supplement the paper priority document within two months. Where the correct access code or application number is not provided or the paper priority document is not supplemented within the specified time period as stated, the priority document shall be deemed to have not been submitted. |
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Source: TIPO Newsletter issued on December 05, 2013 (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep7795.htm) |
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| II. | Important Reminder for Filing a Design Patent Application with Foreign Language Documents! | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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According to Article 4 III of Regulations Governing Submission of Foreign Language Application Documents, where filing a patent application for design with foreign language documents, such documents shall contain drawing(s) and indicate the title of the design. After the amended Patent Act was effective on January 01, 2013, some attorneys didn’t pay attention to the detailed amendments on the regulations. They filed patent applications for design with foreign language documents on which the title of the design was not indicated and caused the event that the priority claim was not accepted. Some appeals they filed against the TIPO’s decision have been rejected, such as the appeal decision No. 10206104170 made on July 23, 2013.
Therefore, TIPO especially reminds that the applicant, who files a patent application for design with foreign language documents, should pay attention to the following matters:
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| 1. | If the title of the design is not indicated in the foreign language documents for filing, the date on which the title of the design is provided shall be regarded as the filing date. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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2. |
Application forms, foreign language documents and priority documents are different documents and have their own functions. Where the title of the design is not indicated in the foreign language documents, it cannot comply with the official requirement in this regard since it is not available to be replaced by claiming that the title has been indicated in the application forms and the priority documents. |
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Where the title of the design is not indicated in the foreign language documents and the foreign language documents do not contain a specification either, it is not the same situation as parts of the description or drawing(s) are missing from the patent application. Therefore, under such situation, it is not allowed to claim that the missing parts of the description or the drawing(s) are completely contained in the earlier application based on which the priority is claimed, so the filing date shall be the date on which the application was first filed. |
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4. |
When the date on which the title of the design is provided is regarded as the filing date which results in exceeding the deadline for claiming the priority, the priority claim shall not be accepted. |
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Source: TIPO News published on November 13, 2013 (http://www.tipo.gov.tw/ct.asp?xItem=494054&ctNode=7127&mp=1) |
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| III. | TIPO will Accept Application for Accelerated Examination for Patent Applications (AEP) in the field of Green Energy Technology from January 01, 2014. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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In order to encourage the development of green energy technology, Condition 4 for applying for accelerated examination is added and will be effective from January 01, 2014.
As long as an invention patent application conforms to any of the following conditions, it will be available to apply for Condition 4 for an accelerated examination:
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| (1) | It involves technologies with respect to energy conservation, new energy and new energy vehicle, etc. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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(2) |
It involves technologies with respect to carbon reduction and resource saving. |
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If the patent application has not been laid open at the time of the AEP request based on Condition 4, the applicant must request for an early laid-open and submit a request fee of NT$1,000 at the same time. AEP request made under Condition 4 must be submitted with the accelerated examination application form, a statement describing that the invention of the patent application is related to green energy technology and an AEP application fee of NT$4,000 per request.
In principle, a notification of responsive examination opinions, final notice or written decision of examination will be issued within 9 months after all necessary documents have been submitted; however, the actual amount of time when a notification would be issued depends on the technical field of the case.
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Source: TIPO News published on December 16, 2013 (http://www.tipo.gov.tw/ct.asp?xItem=500726&ctNode=7123&mp=1) |
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| IV. | Statistics of Accelerated Examination Program (AEP) until November 2013 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Average time for receiving the first notification of responsive examination opinions from TIPO after submitting an AEP request with all necessary documents |
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Country of the basic application for the AEP request (January ~ November, 2013) |
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Source: TIPO’s statistics published on December 09, 2013 (http://www.tipo.gov.tw/ct.asp?xItem=499595&ctNode=6712&mp=1) |
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| Trademarks | ||
| I. | Intervening in an opposition action is not limited to the prescribed time period (three months from the day following the date of publication of registration) of opposition. | |
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According to Article 23 of Administrative Procedure Act, where the conduct of a procedure will affect the right or legal interest of a third person, the administrative authority may ex officio or upon application give such person a notice of intervention into the procedure as a party thereto.
In addition, Article 6 (11) of Trademark Government Fee Standards stipulates that for an application to intervene in an opposition, invalidation or revocation action, NT$2,000 per supplication.
Although the Trademark Act does not explicitly stipulate about the intervention in an opposition, the acts that TIPO receives, examines and makes a decision for an opposition application belong to an administrative disposition rendered by administrative authorities. In order to protect third person’s rights, and reach the purpose of solving the problem at a time in the administrative procedure, where the conduct of a procedure will affect the right or legal interest of a third person, the administrative authority may ex officio or upon application, based on Article 23 of Administrative Procedure Act, give such person a notice of intervention into the procedure as a party thereto.
Furthermore, the regulations in Administrative Procedure Act shall be applied from the beginning to the end of an administrative procedure. According to the Trademark Act, an opposition action starts when the opponent files an opposition up to TIPO and ends on the day when the disposition of the opposition is served to both parties. Thus, during the administrative procedure, any third person may file an application to intervene an opposition action. In addition, since the opposition to be intervened has been brought to TIPO, the intervention thereto is not to initiate an opposition, so it should not be limited to the prescribed time period of opposition.
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Source: TIPO Newsletter issued on November 05, 2013 (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep7720.htm) |
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| Copyrights | ||
| I. | Holding an Art Exhibition with Painting Collection May be Deemed as a Kind of Fair Use. | |
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A painting is a kind of the artistic work. When someone bought a painting, he/she merely obtains the ownership of the painting instead of the copyright thereof. Therefore, the copyright still belongs to the person who creates the painting.
If a person bought some original paintings, printed and bound them as a book, and then sold the book to the public, he/she infringes the rights of reproduction and distribution of the copyright owners thereof, except that he/she has obtained the license or consent from the copyright owners or his/her acts conform to the fair use as stipulated in Articles 44 to 65 of Copyright Act.
On the other hand, if the person holds an art exhibition with those original paintings which he/she collected, it may not constitute infringement of the rights of the copyright owners thereof even though “public display” is also a kind of right belonging to the copyright owners. The reason is that according to Article 57 of Copyright Act, the owner of the original legal copy of an artistic work or photographic work, or a person authorized by the owner, may publicly display such original or legal copy of the work. Therefore, the act to exhibit the original paintings someone collects will not infringe the copyrights.
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Source: TIPO Newsletter issued on November 05, 2013 (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep7720.htm) |
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