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The Rules of Reinstatement Stipulated in Patent Act Are Not Applicable to the Period of Two Months for Requesting a Reexamination After the Decision of Rejection is Served

[ September 2015 ] >Back
Patent 
 
I. The Rules of Reinstatement Stipulated in Patent Act Are Not Applicable to the Period of Two Months for Requesting a Reexamination After the Decision of Rejection is Served
   
  Fact
  The Plaintiff (the applicant of the patent application at issue) received a decision of rejection on June 04, 2013 and requested the reexamination on August 29, 2013.  The request was dismissed by TIPO because the Plaintiff failed to comply with the statutory period of two months for requesting a reexamination, i.e. within two (2) months after the date (June 04) on which the decision of rejection was served.

The Plaintiff alleged that the two-month period was not the statutory peremptory period so TIPO should accept their appeal so as to conform to the principle of fairness.  The Plaintiff then filed an appeal against TIPO’s decision up to the MOEA, the higher authority of TIPO, but it was dismissed as well. Then, the Plaintiff filed the administrative litigation up to the IP Court. 
   
  IP Court’s viewpoint
  Article 48 of Patent Act stipulates that an invention patent applicant dissatisfied with a decision of rejection may provide reason(s) to request a reexamination within two (2) months after the date on which the decision of rejection is served.  The two-month period is a statutory time period.  The Plaintiff didn’t request for reinstatement based on the reason that such delay was caused by natural calamity or other cause(s) not attributable to the applicant. It was not contrary to the rule when TIPO dismissed the request of reexamination filed by the Plaintiff. 

The rules of reinstatement in Patent Act are Articles 29, 52 and 70, which were added into Patent Act effective on December 21, 2011. According to Article 17 of the Patent Act, unless otherwise provided in this Act, where a person filing a patent application or taking other proceedings in connection with patent-related matters has failed to comply within a statutory or specified time period, the application filed or the proceeding initiated shall be dismissed.  Articles 29, 52 and 70 are what the term “unless otherwise provided in this Act” in Article 17 means. 
   
     Article 29 IV: Where an applicant unintentionally fails to claim priority claim at the time of filing, or where the priority claim is deemed not to have been made as prescribed in the preceding paragraph, the applicant may, within sixteen (16) months after the earliest priority date, apply for reinstatement of priority claim, pay the required fees and undertake actions set forth in Paragraphs 1 and 2.

Article 52 IV: Where the applicant unintentionally fails to pay the required fees within the time period set forth in Paragraph 1 or Paragraph 4 of the preceding article, the applicant should pay the patent certificate fee and two times the first-year patent annuity within six (6) months after the period has expired. After the said payment has been made, the Specific Patent Agency shall publish the patent.

Article 70 II: The patentee who unintentionally fails to pay a patent annuity within the time period for late payment set forth in Paragraph 1 of Article 94 may apply for reinstatement of the patent rights within one (1) year after the expiration of the time period of late payment by paying triple the amount originally due, whereby the Specific Patent Agency shall publish with respect to the above.
     
  However, none of them is particularly provided for the request of reexamination (Article 48). Thus, it is explicit that the amended Patent Act published on December 21, 2011 has excluded the request of reexamination from the application of reinstatement.

Consequently, when the Plaintiff delayed the statutory time period for a request of reexamination, he/she should file an application for restoring her/his original status instead of requesting that rules of reinstatement of Patent Act should be applied.
   
  IP Court Judgment No.27, 2014 
   
 
Source: TIPO Newsletter published on July 05, 2015
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8961.htm#553623)
   
II. How to Identify An Invention, or A Utility Model or A Design Made by An Employee Under The Performance of His/Her Job Duties
   
  Fact
  Company B hired Employee A for carrying out a research and development project. Company B alleged that the research achievements from the project should belong to the company because they offered the research facilities and environment.  The sale of the patent rights deriving from the research achievements to a third party made by Employee A had caused damages to Company B. Thus, Company B claimed damages from Employee A based on Article 184 I of Civil Code. 

On the contrary, Employee A alleged that he/she accomplished the patent before working for Company B so it had no connection to the performance of his/her job duties.
   
  IP Court’s viewpoint
  1. The patent at issue has nothing to do with the performance of Employee A’s job duties.
    Company B claimed that Employee A filed the patent at issue when he/she was engaged in the company and they had paid the application fees and revised fees on behalf of Employee A. However, the period from Employee A’s employment in Company B to the filing date of the patent at issue was quite short, and Company B did not pay all expenses for the patent filing. Thus, it was unable to identify that the patent at issue was made under the performance of Employee A’s job duties in accordance with Company B’s allegation.

Company B further claimed that the patent at issue had been revised many times during Employee A’s engagement in the company so the patent hadn’t yet been finished before Employee A worked for the company.  However, the revisions made to the patent at issue never enlarged the scope of the specifications or drawings of the original patent application as filed. The content of the patent at issued as published had been included in those of the original patent application as filed, so the technology as disclosed in the patent at issue had been finished before Employee A worked for Company B.
     
  2. The claim of damages made by Company B to Employee A based on Article 184 I of Civil Code is unsustainable.
    Company B was unable to prove that the patent at issue was an invention made under the performance of Employee’s job duties in Company B. Thus, Company B’s claim of damages based on Article 184 I of Civil Code was unsustainable.
   
  IP Court Judgment No.87, 2014
   
 
Source: TIPO Newsletter published on July 05, 2015
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8961.htm#553623)

Trademark 
 
I. Amendments to "Enforcement Rules of the Trademark Act" and " Implementation of Filing Trademark Applications and Services by Electronic Means" published on July 14, 2015
 
   
  In order to simplify the filing procedures for trademarks, TIPO amended the followings regulations:

In the "Enforcement Rules of the Trademark Act":
   
 
Articles Amendments Reasons for Amendments
Article 4
Any document of proof submitted pursuant to the Act or these Rules shall be original. However, copies of the original may be used instead under the following:
      (1) the original has been submitted to the Registrar Office, and the serial number of the file in which the original is has been identified in the copy; or
      (2) the person who submits the copy has made a preliminary statement that the copy and the original are identical. In order to check the authenticity of the copy, the Registrar Office may give such person a notice to submit the original and has it returned after the authenticity has been checked.
        Subparagraph 2 of the preceding paragraph shall not apply to the documents of proof for rights of priority and exhibition priority.
 For priority documents, when trademark applications are filed, IP offices in most countries usually publish the filing particulars thereof in the official databases within a short period to enable the public to check such information on-line. 

For exhibition priority documents, only formality examination is proceeded.  If the examiner doubts the genuineness of the exhibition priority documents, he/she still has the rights to request for the original copy thereof based on Subparagraph 2 of this article. 

Therefore, to simplify the procedures, the 2nd paragraph was deleted.
Article 27
        A request for division of an application for registration shall be made by filing a written request indicating how many parts will the original application be divided into and the designated goods or services to be included in each divisional application, as well as furnishing each divisional application with a copy of the written request and related documents of the original application.
        The designated goods or services to be included in each divisional application shall not overlap or go beyond the scope of designated goods or services of the original application.
    Where a request for division of an application for registration was filed after the registration was accepted and before the registration was published, the Registrar Office shall proceed the division of registration after the registration fee has been paid by the applicant and the registration was published.
 TIPO started to adopt the on-line examination system for trademark applications on January 01, 2015.  When applying for dividing a trademark application, the system will automatically produce copies of the divisional trademark applications based on the number of division. Thus, it is no longer necessary to request the applicant to submit such documents. 
Article 36
        Paragraphs 1 and 2 of Rule 27 shall apply mutatis mutandis to a request of division of a registration. A copy of the written request shall also be furnished for each divisional application along with related documents of the original application.
        Where the division of a registration is accepted, a trademark certificate shall be issued for each divisional registration by the Registrar Office.
 Since the on-line examination system hasn't yet been applied to the division of a trademark registration, the applicant has to submit related documents of the original application based on the number of division. 
   
  In the "Implementation of Filing Trademark Applications and Services by Electronic Means"
   
 
Articles Amendments Reasons for Amendments
Article 11         The documents of proof to be submitted in an electronic trademark application may be replaced with the electronic version thereof prescribed by the Registrar Office, except for the original, the certified copy, or evidence submitted pursuant to the Act or the Enforcement Rules of the Act.
        Regarding the priority document, the original or the certified copy of the documents of proof issued by the WTO member or country receiving the first application shall be submitted.
        For the documents of proof submitted in electronic form pursuant to Paragraph 1, preliminary showing shall be made that the electronic files are identical to the original or the certified copy.
    Whenever it deems necessary, the Registrar Office may require the user to submit the original or the certified copy of the electronic files prescribed under Paragraph 1 for verification.		 The amendment is made to comply with the amendment of Article 4 II of the "Enforcement Rules of the Trademark Act".
 
 
 
Source: TIPO News published on July 14, 2015
(http://www.tipo.gov.tw/ct.asp?xItem=554445&ctNode=7452&mp=1)
   
II. Pasting Trademark Labels on Invoices is Deemed Sufficient Use of A Trademark
 


Trademark at issue
   
  Fact
  An individual filed the trademark at issue designating "watches" in Taiwan which was registered on January 01, 1961.  After conducting renewal and assignment for several times, the current trademark owner is "FORMOSA WATCH CO., LTD." (hereinafter "the intervening party") 

The Plaintiff requested to revoke the trademark at issue based on the reason that it had not yet been put to use or such use had been suspended for a continuous period of not less than three years without proper reasons for non-use according to Article 63 I (2) of Trademark Act. 

The intervening party submitted copies of invoices where the trademark at issue was pasted along with model number of each product as evidence of use.

TIPO regarded that the invoices were sufficient evidence of use so dismissed the request for revocation because TIPO did not think the request of revocation was well grounded. The Plaintiff dissatisfied TIPO's decision so filed an appeal and the administrative litigation.
   
  IP Court’s viewpoint
  Firstly, TIPO shall, ex officio or by request, revoke the registration of a trademark if such trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use according to Article 63 I (2) of Trademark Act.

According to Article 5 of Trademark Act, “use of a trademark” means any of the following acts, in the course of trade, where such trademark is capable of being recognized by relevant consumers as a trademark:
   
  (1) to apply a trademark to goods or packaging or containers thereof;
  (2) to possess, display, sell, export, or import the goods referred to in the preceding subparagraph; 
  (3) to apply a trademark to articles relating to the provision of services; or
  (4) to apply a trademark to commercial documents or advertisements relating to goods or services.
   
  In Taiwan, trademark registration is on a "first-to-file" basis, and actual use of the trademark is not a prerequisite for an application for registration of the trademark. However, the function of a trademark and the purpose of a trademark registration are not merely about acquiring trademark rights. Only through actual use of the trademark, consumers may come to associate the trademark with the goods or services.  The more use of the trademark is made, the better function as a source indicator the trademark will have. Therefore, the trademark use is essential.

When determining whether it is the trademark owner's genuine use of the trademark, objective criteria, such as if the trademark is used within the scope of the designated goods and services, should be complied with in addition to the general rules as stipulated in Article 5 of Trademark Act. 

Thus, we can say that available trademark use shall conform to the following conditions:
   
  (1) the user uses the trademark when engaging in commercial activities;
  (2) the use of the trademark shall be one of the four acts of trademark use as stipulated in Article 5 of trademark;
  (3) the trademark in use shall be capable of being recognized by relevant consumers as a trademark; and
  (4) such use shall comply with general practice in the trade.
   
  In conclusion, placing the trademark on commercial documents or advertisements relating to goods or services, such as order forms, catalogs, price lists, invoices, instructions, etc. enables consumers to recognize the trademark from those commercial documents so can be deemed sufficient use of the trademark.
   
  IP Court Judgment: No.124/2014
   
 
Source: TIPO Newsletter issued on July 05, 2015
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8961.htm#553622)

 

 

 

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