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Amended Substantive Examination Guidelines of Design Patent have been effective from April 1, 2016

[ June 2016 ] >Back
 
Patent
 
I. Amended Substantive Examination Guidelines of Design Patent have been effective from April 1, 2016
   
  In response to the international trend and the application demands of the domestic industry, the Taiwan Intellectual Property Office (TIPO) amended the Substantive Examination Guidelines of design patent referring to International Standard, Practice of the examination and the relating cases to define the Guidelines more clearly. Public hearings have been convened on November 11 and 30, 2015 to discuss the said amendment. After multiple modification, the draft amendments were pre-announced to the public from March 1 to 15, 2016 and became in force on April 1, 2016. The main points of the said amendments are as follows:
   
  1. Regarding the issue “The color shown on the claimed design forms no part thereof”, the present disclosure of the drawings has been changed:

According to the Paragraph 2 of Article 136, Patent Act: ”The extent of the protection conferred by a design patent shall be determined by the drawing(s), and the description may be considered as a reference.” The disclosed contents of the drawings are the main basis for determining the claim of a design application. Referring to the practice in the USA and Japan, if a design claims colors, , the drawing(s) thereof should be presented in color. While the color shown on the claimed design forms no part thereof, the drawing(s) should be presented in line drawings, grayscale drawings or black-white photos to ensure the principle that the drawing disclosure is the most important element of the application and the description should be considered as a reference.
     
    For example:
   
Before the amendment After the amendment
Description “The color shown on the claimed design forms no part thereof.” Description No statement is required.
Drawing(s) Drawings with colors are allowable. Drawing(s) The drawing(s) should be presented in line drawings, grayscale drawings or black-white photos.
     
   
     
  2. To make the obvious differentiation between “the claimed part(s) of a design” and “the unclaimed part(s) of a design”, amendments of examination guidelines in practice have been conducted:
     
    In order to comply with the Paragraph 5 of Article 53, Enforcement Rules of Patent Act, more ways of disclosure which can determine the difference more clearly are accepted: 
     
    For example:
   
     
  3. Regarding the function of “the unclaimed part(s) of a design”, lexical correction has been conducted:
     
    The phrase “the unclaimed part(s) of a design” in the current practice can be used under multiple situations. Only when judging the novelty and creativity is necessary, the location , size  and distribution  relationship of “the claimed part(s) of a design” will be explained and evaluated in order to make the definition thereof clearly. Thus, the amendment further defined the function of “the unclaimed part(s) of a design” as follows: (1) describing the article to which the design is applied (2) defining the location, size and distribution relationship with “the claimed part(s) of a design” (3) explaining the environment of the design.
     
    For example:
   
Current disclosure Amendment
1) Describing the applied article 1) Describing the applied article
2) Defining the location, size and distribution relationship between the design and the environment 2) Defining the relations to the location, size and distribution relationship of the “claimed part”
[Brief description of the design] It is often to see the following descriptions: 3) Explaining the environment
  • Brocken lines shown on the claimed design form no part thereof.
 Example:

 
  • The circled part with chain lines in the drawing defines the scope of claim and forms no part thereof.
  • Color shown on the claimed design forms no part thereof.
  • Text, trademark and signs in the drawings are not the claimed parts of the design.
  • The reference drawing forms no part of the claimed design.
     
   
1.“Location” means the relative position of “the claimed part” to the article as a whole.
2.“Size” means the scale of “the claimed part”. The said size should not be identified by an absolute size, but
    with a range of the size which can be understood by the person with ordinary skill in the same technical
    field.
3.“Distribution” means the proportion of “the claimed part” in comparison with the article as a whole. 
     
  4. Regarding the “Amendment” of Chapter 6, new examples for partial design and Computer-Generated Icons and Graphical User Interface (GUI) have been added:
     
    For example:
    1. Adding boundary line to clearly distinguish the claimed part and the unclaimed part of the design in the amendment during the examination won’t be deemed extending beyond the scope of the drawings as filed. 

Reason: Since the part of box after the amendment has been already disclosed in the drawing as filed (drawing on the left side), thus, the new added boundary line does not exceed the disclosed range in the drawings as filed (drawing on the right side).
       
       
       
    2. The randomly added boundary line in the amendment will be deemed extending beyond the scope of the drawings as filed.

Reason: The boundary line is randomly added to the bottle in the amendment. However, by adding the boundary line, there is no way to determine which area can be randomly selected as the claimed part of design from the range disclosed in the drawings as filed (drawing on the left side).  That is the claimed part cannot be directly determined by the added boundary line. Therefore, adding the boundary line as shown in the drawing on the right side exceeds the disclosed range in the drawings as filed.
     
 
Source: TIPO news published on March 23, 2016
(http://www.tipo.gov.tw/ct.asp?xItem=584632&ctNode=7127&mp=1)
   
II. Advancing Laying-open is No Longer a Requirement for Requesting AEP, PPH and TW-SUPA from April 1, 2016
   
  Before April 1, 2016, it was mandatory for patent applications which request for accelerated examination under AEP, PPH and TW-SUPA to file a request for advancing the laying-open and pay an official fee, NT$1,000, if the patent applications have not yet been laid open.

Referring to the practice adopted by JPO, KIPO and USPTO, none of them requires statutory laying-open in their PPH guidelines. In order not to hinder TIPO from the cooperation of accelerated examination with other countries, from April 1, 2016, advancing the laying-open is no longer required when requesting for the accelerated examination under AEP, PPH and TW-SUPA.
   
 
Source: TIPO news published on March 21, 2016
(http://www.tipo.gov.tw/ct.asp?xItem=571515&ctNode=7127&mp=1)

Trademark
 
I. Amended Business Registration Act has been Effective from May 06, 2016
   
  In order to well protect Intellectual Property rights, the Business Registration Act expressly stipulates in Article 29 V that once a business name is prohibited from use  by a final court judgment and the business fails to record a change for the business name within six months from the final court judgment, the Competent Authority at the place where the business is located may ex officio, upon a notification from the Procuratorate concerned or upon an application filed by an interested party, revoke or withdraw the business registration or parts of the registered particulars.

According to the said Article, when a trademark is used as a business name by a third party and such use is adjudicated by the court as an infringement, the owner of the business name shall file a recordal of change for the business name within six months from the final court judgment. Otherwise, the Competent Authority may revoke the business registration ex officio in order to prevent the owner from ignoring the judgment.
   
 
Source: MOEA news published on May 06, 2016
(https://www.moea.gov.tw/MNS/populace/news/News.aspx?kind=2&menu_id=41&news_id=52786)
   
II. The three-dimensional Trademark "雪肌精" Filed by KOSE Corporation is Finally Approved to Registration on May 16, 2016 
   
 
Trademark at issue
   
 
Issues of disputed matter: 
TIPO requested the applicant (i.e. KOSE corporation, hereinafter “KOSE”) to disclaim the shape and color of the bottle because such shape and color of the bottle are frequently used by the relevant industries and may give rise to doubts as to the scope of the trademark rights. However, KOSE disagreed with the disclaimer of the shape and color of the bottle.
 
  Development History
   
  **TIPO formally rejected the trademark at issue so KOSE filed an appeal up to TIPO’s superior authority, MOEA, but MOEA sustained TIPO’s decision.  Then, KOSE brought up an administrative action up to IP Court.
   
 
IP Court Supreme Administrative Court
Administrative litigation First instance Administrative litigation Appeal
Plaintiff Defendant Plaintiff Defendant
KOSE TIPO TIPO KOSE
win lost win lost
   
  Viewpoints of Courts
 
IP Court Supreme Administrative Court
1. The market survey made by Nielsen N.V. is
   authentic.
2. The trademark at issue has both the inherent
   distinctiveness and the acquired distinctiveness (i.e.
   “secondary meaning”)		 The trademark at issue does not have the inherent distinctiveness but acquired the distinctiveness (i.e. “secondary meaning”) after the extensive use in commerce.
   
 
IP Court Judgment No.83 of 2014
Supreme Administrative Court Judgment No.792 of 2015

 

 

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