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Patent |
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I. |
Amendments to “Regulations for Reduction and Exemption of Patent Annuities” Published on June 29, 2016 and Effective on July 01, 2016 |
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“Regulations for Reduction and Exemption of Patent Annuities” has been amended for three times since it was promulgated on May 30, 1994. The last amendment was made on January 1, 2013.
Now, in order to comply with the amendment of Article 2 I & II of "Small and Medium Enterprise Definition Standards" promulgated on March 30, 2015, Article 2 I of “Regulations for Reduction and Exemption of Patent Annuities” was amended.
Article 2 of "Small and Medium Enterprise Definition Standards"
The term "SME" as used in the Standards shall mean an enterprise which has completed company registration or business registration in accordance with the requirements of the laws, and which conforms to the following standards: |
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the enterprise is an enterprise in the manufacturing, construction, mining or quarrying industry with either paid-in capital of NT$80 million or less, or less than 200 regular employees. |
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the enterprise is an enterprise in the industry other than any of those mentioned in the Sub-paragraph immediately above and either had its sales revenue of NT$100 million or less in the previous year, or has less than 100 regular employees.
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The amendment of the Regulations of “Regulations for Reduction and Exemption of Patent Annuities” was published on June 29, 2016 and has come into effect on July 1, 2016. |
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Amendments |
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Article 2 |
The “natural person” referred to in the Regulations shall mean a natural person with Taiwan nationality or foreign nationality.
The “domestic school” referred to in the Regulations shall mean a public or registered private school.
The “foreign school” referred to in the Regulations shall mean a foreign school recognized by the Ministry of Education.
The “small and medium enterprise” referred to in the Regulations shall mean an enterprise that meets the standards set forth in the Small and Medium Enterprise Definition Standards (hereinafter referred to as SMEDS); The same standards shall apply to the “foreign enterprise” shall mean an enterprise that meets the standards set forth in Paragraph 1, Article 2 of the SMEDS be followed to the same standards with the SMEDS. |
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Article 9 |
The Regulations shall take effect from the date on which the Act enters into force.
The amendment of the Regulations shall come into effect on the date of promulgation except that the November 29, 2011 amendment of the Regulations shall enter into force on January 1, 2013. |
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Source: TIPO news published on June 29, 2016
(https://www.tipo.gov.tw/ct.asp?xItem=594658&ctNode=7452&mp=1)
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II. |
Announcement of Amendment to Articles 5 and 6 of “Regulations Governing Submission of Foreign Language Application Documents” |
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On June 29, 2016, Ministry of Economic Affairs, R.O.C. released an amendment of Articles 5 and 6 of “Regulations Governing Submission of Foreign Language Application Documents” (hereinafter “the Regulations”) based on the official document No. 1050460284. The amendment focuses on that the format of the specification in foreign language for a patent application shall not be limited. Thus, Article 5 is deleted from the Regulations and the amendment has been effective from July 1, 2016.
The Regulations was initially promulgated on July 3, 2012 and has been effective from January 1, 2013 until now without any amendments.
Article 5 of the Regulations prescribed that since the nature of priority documents and the patent gazette in foreign languages are different from that of the specifications and drawings in foreign languages, the patent applicant shall not substitute foreign language specifications and drawings with foreign language patent gazette or priority documents.
However, in order to encourage research and improve the efficiency, International legislation tends to simplify filing procedures in recent years. In consideration of international treaties and related national legislation examples, no limitation is set for the format of specifications and drawings in foreign languages but it focuses on whether the formal specifications and drawings supplemented after filing exceed the scope of the technical features in the foreign documents submitted at filing. In the practice, most specifications in foreign languages are actually a simple adjustment from the priority documents and the patent gazette in foreign languages. Thus, there is no substantial benefit but to cause disputes to limit that the priority documents and the patent gazette in foreign languages cannot replace the specifications and the drawings in foreign languages while filing a patent application. Therefore, Article 5 of the Regulations was deleted. |
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Source: TIPO news published on June 29, 2016
(http://www.tipo.gov.tw/ct.asp?xItem=594668&ctNode=7452&mp=1)
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III. |
TIPO will exceptionally accept that the applicant may submit the certificate/Letters Patent in replacement of the priority document as a certified document for claiming priority for a Design patent application depending on the actual situation of the case. |
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Whenever it is confirmed that any patent authority in a foreign country does not issue a certified copy of an application document but the registration document only, TIPO will exceptionally accept the applicant submits the registration document as a certified document for claiming priority for a design patent application in Taiwan. |
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An applicant of the design patent application who claims priority shall submit a certified copy of the first patent application issued by the foreign patent authority instead of the certificate/Letters patent within ten (10) months after the earliest priority date. |
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An applicant may submit relevant evidence to prove that the foreign patent authority only issues the certificate/Letters Patent without the certified copy of application document for the first Design patent application. Under the circumstance that the aforesaid fact is confirmed by TIPO, TIPO will exceptionally allow the applicant to submit the certificate/Letters patent as the valid replacement of the certified copy of the first Design patent application depending on the actual situation of the case. Currently, it has been asserted that IPOS does not offer a certified copy of application document for the Design patent application but only issues Letters Patent thereof. |
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A reminder to the applicants: EUIPO indeed issues certified copies for the Design patent applications. Applicants should submit the same for claiming priority in Taiwan. |
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Once it is confirmed that any other foreign patent authority only issues the certificate/Letters Patent without the certified copy of application document for the first patent application in the future, TIPO will make timely announcement in this regard to help the applicants to proceed with the procedures. |
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Source: TIPO news published on June 27, 2016
(http://www.tipo.gov.tw/ct.asp?xItem=594534&ctNode=7127&mp=1)
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IV. |
Amendment on Article 11 of “Regulations Governing the Implementation of Filing Patent Applications and Services by Electronic Means” |
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To conform to the newly added regulation of Paragraph 4, Article 26 of the Enforcement Rules of the Patent Act amended on June 29, 2016, and also to encourage the applicants to file patent applications by electronic means and to promote paperless work, the certified copy of the priority document is no longer required if the applicant has submitted the electronic version thereof prescribed by Taiwan IP Office (TIPO). Thus, the regulation regarding the certified copy of the priority document in Paragraph 2, Article 11 of “Regulations Governing the Implementation of Filing Patent Applications and Services by Electronic Means” is deleted. |
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Amendments |
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Article 11 |
The documents of proof to be submitted in an electronic patent application may be replaced with the electronic version thereof prescribed by the Specific Patent Agency, 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 patent application shall be submitted.
For the documents of proof submitted in electronic form pursuant to the preceding 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 Specific Patent Agency may require the user to submit the original or the certified copy of the electronic files prescribed under Paragraph 1 for verification. |
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Amendment on Rule 26 of “Enforcement Rules of the Patent Act” |
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Amendments |
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Rule 26 |
The priority document to be submitted pursuant to Paragraph 2, Article 29 of the Act shall be the certified copy.
In the event that the priority document submitted by the applicant within the time limit prescribed under Paragraph 2, Article 29 of the Act is a photocopy, the Specific Patent Agency shall notify the applicant to submit the certified copy thereof within specified time limit; where such submission is not made within the specified time limit or the submission is still incomplete, the 10 priority claim is deemed not to have been claimed pursuant to Paragraph 3, Article 29 of the Act. However, in the event that the certified priority document has already been submitted to the Specific Patent Agency, a photocopy specifying the number of the patent application to which the certified priority document appends may be submitted as a substitute.
In the event that the priority document referred to in Paragraph 1 has been exchanged between the Specific Patent Agency and the receiving patent authority of the country or the WTO member by means of electronic communication, the priority document is deemed to have been submitted by the applicant.
The certified copy pursuant to paragraph 1 may be replaced with the electronic file thereof prescribed by the Specific Patent Agency, and preliminary showing shall be made that the electronic version is identical to the certified copy. |
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I. |
The sources of the electronic files include: |
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DVDs of the priority documents issued by the foreign Specific Patent Agency. |
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The electronic file of the priority documents downloadable on the Internet issued by the foreign Specific Patent Agency. |
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The electronic file scanned from the hard copy of the certified priority documents issued by the foreign Specific Patent Agency. |
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II. |
Means of submission of the electronic file of the priority documents are as follows: |
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Electronic transmission: using the electronic filing forms enclosed with the electronic file of the priority documents. |
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Hard copy submission: using the paper filing forms enclosed with DVDs of the priority documents. The DVDs can be the DVDs of the priority documents issued by the foreign Specific Patent Agency or the copies thereof, or the DVDs containing the electronic files pursuant to I.2 and I.3. If more than one priority are claimed, two or more electronic files of the priority documents can be included in the same disk. The application numbers of the priority applications shall be indicated on the disk. The number of disks to be submitted should be indicated on the filing form. |
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Time frame for the submission of the electronic files of the priority documents: the applicant can submit the electronic files simultaneously when filing the application or supplement the electronic files at later stage. |
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If the electronic files of the priority documents are submitted upon filing the application, the applicant can use the forms of invention patent application, utility model patent application, or design patent application based on the type of the patent to be applied. |
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If the electronic files of the priority documents are supplemented at later stage, the applicant can use the forms of request of supplementation. |
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Preliminary showing shall be made that the electronic file is identical to the certified copy simultaneously with the submission of the electronic files of the priority documents. The means of making preliminary showing are as follows: |
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Preliminary showing for the electronic files submitted through electronic transmission is not required because the electronic filing forms already contain the declaration of the applicant that “the attached PDF files or image files are identical to the original documents.” |
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For hard copy submission using the paper filing forms enclosed with DVDs, the check box indicated “Attachment: the electronic files of priority documents(DVD), (the attached PDF files or image files are identical to the original documents) ” should be checked on the filing forms. |
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Source: TIPO news published on June 29, 2016
(http://www.tipo.gov.tw/ct.asp?xItem=594662&ctNode=7452&mp=1)
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V. |
Case Study -- Design Patent Infringement
(IP Court Decision No.41, 2015 Civil Action for Patent Infringement)
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Comparison of features between the patent No. D133389 and the infringing product: |
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Patent No. D133389 |
Infringing Product |
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Plaintiff: Giant (Kun Shan) Co. Ltd |
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Defendant (1): Tai Sheng Development Ent, Co. |
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Defendant (2): Wei Sheng Marketing Co., Ltd. |
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Fact |
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Plaintiff is the patentee of the design patent No. D133389 and the duration of the patent right is from February 21, 2010 to January 21, 2021. |
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he infringing products were manufactured by Defendant(1) and consigned to Defendant(2) for sales. |
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Defendant(1) is the patentee of the design patent No.D159447 and the duration of the patent right is from March 21, 2014 to July 14, 2025. |
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Plaintiff bought one infringing product at price of $25,500 on October 15, 2014 from an individual and then bought another infringing product at price of $22,800 from Zhi Yuan Green Energy Technology Inc. on June 05, 2015. |
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Plaintiff authorized a lawyer to issue six (6) Legal Attest Letters together with copies of Letters Patent and Patent Gazette of the patent No.D133389 as well as an infringement analysis report to Defendant(2) on November 21, 2014 to request them to cease the infringing act and Defendant(2) received the same on November 25, 2014. (Evidence 6) |
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Plaintiff further authorized the lawyer to issue seven (7) Legal Attest Letters to Defendant(2) on December 23, 2014 to request them to cease the infringing act and Defendant(2) received the same on December 24, 2014. (Evidence 7) |
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Defendant(2) once replied to Plaintiff by sending two Legal Attest Letters respectively on December 05, 2014 and January 05, 2015 to agree to stop manufacturing and selling the infringing products. |
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Defendant(1) and Defendant(2) have at least sold out 335 infringing products. |
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IP Court’s viewpoints |
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IP court granted that the infringing product falls into the scope of the design patent No. D133389 according to the comparison of features between the patent claimed and the infringing product as shown above. |
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Both defendants have negligence in their acts of infringing the design patent No. D133389 in view of the registration and publication systems of patent rights in Taiwan. After a patent is published, anyone is able to study the scope of the patent right. Whenever a company would like to engage in production, manufacture and sales of a product, they are able to check in advance whether a patent right with relation to the product is existing. Defendant(1) and Defendant(2) failed to exercise reasonable care to avoid infringing others’ patent rights, so they shall be responsible for their negligence. |
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Plaintiff claimed that Defendant(1) and Defendant(2) infringed their patent rights on purpose, for they could still buy the infringing products from the market after issuing the Legal Attest Letters. IP Court did not sustain it because it was the defendants’ distributors to sell the infringing products but not the defendants themselves. |
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The damages shall be calculated based on the illegal profits obtained by selling the infringing products, i.e. the difference between the selling price and the cost. |
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The infringement on patent rights does not mean the damage to the company’s reputation, so IP Court overruled Plaintiff’s request of posting an apology. |
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Source: IP Court Decision, No.41, 2015, made on May 17, 2016
(http://jirs.judicial.gov.tw/Index.htm)
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