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Patent |
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I. |
It Is Not Required To Pay The Official Fee For Requesting For The Recordal Of Change Of Patent Agent In The Case That The Original Patent/Trademark Agent Dies. |
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According to Civil Code, the contract of mandate between the applicant and the agent will be extinguished from the death of the agent. In the meantime, the contract of mandate should be extinguished because the death is occurred. The nature is different from the juridical acts that the applicant removes the original agent and then designates a new agent. Hence, if the patent/trademark applicant designates a new agent because the original agent dies, it is not subject to the change of agent, so the official fee for the recordation of change of agent (Change of trademark agent: NTD500/USD17; Change of patent agent: NTD300/USD10) will not be required. |
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2. |
The above amendment will be supplemented to Patent Examination Guideline, Part 1, Chapter 4, Section 5 “Replacement of Representative”. |
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Source: TIPO news published on August 22, 2016
(https://www.tipo.gov.tw/ct.asp?xItem=599414&ctNode=7127&mp=1)
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II. |
Draft Amendment to Patent Act in Response to Trans-Pacific Partnership Agreement |
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For accession to Trans-Pacific Partnership (TPP), draft amendment to Patent Act was formulated to conform to the regulations of the TPP Agreement. This draft amendment has been passed by the Executive Yuan on August 4, 2016 and will be effective upon being passed by the Legislative Yuan.
The major focuses of the draft amendments are as follows: |
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1. |
Expansion of the applicability of “grace period” |
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The grace period for the invention patent is extended to twelve months. Also, the requirements regarding the forms of public disclosure and the essential procedures for applying the grace period in invention, utility model and design patents are loosened. (Articles 22 and 122 of the Draft Amendment) |
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2. |
Adjustment of the regulations of “prior use” |
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The relevant amendments to the regulations of “prior use” are made to comply with the extension of the grace period. When a person has learned of the invention from the patent applicant within the grace period and the patent applicant has made a statement reserving his/her right to a patent being granted, the person cannot apply the “prior use” and the patent applicant can still file the patent application within the grace period.(Articles 59 and 142 of the Draft Amendment) |
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3. |
Extension of patent term due to examination delay |
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To compensate for unreasonable delay in patent examination by the Specific Patent Agency and to protect the patentee’s right, relative regulations are formulated regarding the calculation of the period of examination delay, the period for deduction, period of application, the handling when the extension period applied by a patentee is different from that calculated by the Specific Patent Agency, and the grounds for invalidation.(Articles 57-1 ~57-4 of the Draft Amendment) |
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4. |
Litigation procedure related to the “Patent Linkage” system |
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When an application for the approval of the generic drug is filed with a declaration of non-infringement against the new drug patent or invalidity of the new drug patent, the patentee of the new drug patent may take patent infringement action during the examination of the approval of the generic drug. If no such action is taken, the applicant for the approval of the generic drug may also file a declaratory judgment to declare non-infringement.(Article 60-1 of the Draft Amendment) |
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Amendments |
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Article 22 |
An invention which is industrially applicable may be granted a patent upon application in accordance with this Act, except for the following:
1. the invention was disclosed in a printed publication prior to the filing of the patent application;
2. the invention was publicly exploited prior to the filing of the patent application; or
3. the invention was publicly known prior to the filing of the patent application.
An invention that is without the circumstances prescribed in the subparagraphs of the preceding paragraph but can be easily made by a person ordinarily skilled in the art based on prior art shall not be patented .
Where the invention was publicly disclosed based on the intention of the applicant or without the consent of the applicant, the invention Any of the following events shall not be deemed as one of the circumstances prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, which may preclude the grant of an invention patent, provided that the concerned patent application is filed within six (6) twelve (12) months after the date of the event's occurrence: .
1. the invention concerned was publicly disclosed as a result of conducting a test;
2. the invention was disclosed in a printed publication;
3. the invention was displayed at an exhibition held or recognized by the Government; or
4. the invention was disclosed without the consent of the applicant.
An applicant claiming exemption as set forth in Subparagraph 1 through Subparagraph 3 of the preceding paragraph shall state the fact and the relevant date in the patent application at the time of filing and provide document(s) of proof within the time period specified by the Specific Patent Agency.
The preceding paragraph shall not apply to public disclosure in patent gazettes in the ROC or other countries based on the intention of the applicant.
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(Newly Added)
Article 57-1
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When an invention patent application is published in accordance with the Article 52 by the Specific Patent Agency after more than 5 years from the filing date or 3 years from the date of applying for substantive examination, the patentee may apply extension of patent term due to examination delay.
The period of extension of the preceding paragraph shall be calculated from the later date of the preceding paragraph and shall deduce the time period that is not attributable to the Specific Patent Agency and the time period that is attributable to the patentee; and the allowed period of extension shall not exceed 5 years.
The period of extension of Paragraph 1 shall exclude the time period for the proceedings of appeal and administrative litigation.
In the case of a divisional application in accordance with Paragraph 1of Article 34 , the filing date specified in Paragraph 1 shall be the date of the divisional application; in the case of a converted application in accordance with Paragraph 1of Article 108 , the filing date specified in Paragraph 1 shall be the date of the conversion application.
The time period that is not attributable to the Specific Patent Agency and the time period that is attributable to the patentee specified in Paragraph 2 shall be prescribed in the Enforcement Rules of the Patent Act.
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(Newly Added)
Article 57-2
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An application for the extension of patent term in accordance with the preceding article shall be filed with an application form to the Specific Patent Agency within 3 months from the date of publication of the invention patent application. |
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(Newly Added)
Article 57-3
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For an application for patent term extension, if the extended patent term calculated by the Specific Patent Agency exceeds the term applied by the patentee, the extended term applied by the patentee shall apply.
If the extended patent term calculated by the Specific Patent Agency is shorter than the term applied by the patentee, the Specific Patent Agency shall notify the applicant of the patent term extension application to file a response within a specified time period. If the applicant fails to make a response within the time period, the extended term calculated by the Specific Patent Agency shall apply.
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(Newly Added)
Article 57-4
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Any person may file an invalidation action against the request of patent term extension granted under Paragraph 1 of Article 57 to the Specific Patent Agency, together with document(s) of proof, under any of the following circumstances:
1. where the extended term exceeds the term that is eligible for extension according to Paragraph 1 of Article 57 under the Patent Act; and
2. where the applicant of the patent term extension application is not the patentee.
If an invalidation decision revoking the patent term extension has become final and binding, the granted patent term extension shall be deemed nonexistent ab initio. However, if such final and binding invalidation decision of revocation is rendered due to violation of Subparagraph 1of the preceding paragraph, only the exceeding period of the extension shall be deemed nonexistent.
With respect to an invalidation action filed against patent term extension of a patent pursuant to Paragraph 1, the provisions in this Act with respect to invalidation actions against invention patents shall apply mutatis mutandis.
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Article 59 |
The effects of an invention patent right shall not extend to the following circumstances:
1. acts done privately and for non-commercial purpose(s);
2. necessary acts to exploit the invention for research or experimental purpose(s);
3. acts done by a person who has been exploiting the invention or making all the necessary preparations for doing such act in this country before the filing date of the invention. However, this provision shall not apply where the person has learned of the invention from the patent applicant for less than six (6) twelve (12) months and the patent applicant has made a statement reserving his/her right to a patent being granted;
4. a vehicle merely passing through the territory of this country, or any device of such vehicle;
5. where a patent granted to a person not the owner of the right to apply for a patent is revoked as a result of an invalidation action filed by the patentee, acts done by a licensee who has, prior to invalidation, been exploiting the invention or making all the necessary preparations to do such an act in good faith;
6. where, after the sale of a patented product made by the patentee or made under consent of the patentee, using or reselling such product. The making and selling as stated above are not limited to acts done domestically; and
7. where, after an invention patent is extinguished pursuant to Subparagraph 3, Paragraph 1 of Article 70 and before it is reinstated and published pursuant to Paragraph 2 of Article 70, acts done by a person who has been exploiting the invention or making all the necessary preparations to do such an act in good faith.
The person exploiting the invention as stated in Subparagraphs 3, 5, and 7 of the preceding paragraph, may continue such exploitation within the original business purpose(s).
A licensee as stated in Subparagraph 5 of Paragraph 1, who continues to exploit the invention after the patent is revoked, shall pay the patentee a reasonable royalty from the date of receiving a written notice from the patentee.
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(Newly Added)
Article 60-1
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Where an applicant files an application for the approval of genericdrug with a declaration regarding the patent of the approved new drug prescribed in Paragraph 4, Article 48-9 of Pharmaceutical Affairs Act, the patentee may take legal actions to seek removal of infringement or prevention of threatened infringement pursuant to Paragraph 1, Article 96 of the Patent Act after receiving a notification.
If the patentee does not take litigation within the period prescribed in Paragraph 1 of Article 48-13 of Pharmaceutical Affairs Act, the applicant of the preceding paragraph may file a declaratory judgment to declare non-infringement.
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Article 122 |
A design which is industrially applicable may be granted a design patent upon application in accordance with this Act, provided any of the following does not exist:
1. an identical or similar design was disclosed in a printed publication prior to the filing of the patent application;
2. an identical or similar design was publicly exploited prior to the filing of the patent application; or
3. the design was known to the public prior to the filing of the patent application.
A design that is without the circumstances prescribed in the preceding paragraph but can be easily conceived by a person ordinarily skilled in the art based on prior art shall not be patented.
Where the invention was publicly disclosed based on the intention of the applicant or without the consent of the applicant, the invention Any of the following events shall not be deemed as one of the circumstances prescribed in Paragraph 1 or the preceding paragraph, which may preclude the grant of a design patent, provided that the concerned patent application for design is filed within six (6) months after the date of the event's occurrence:
1. the design was disclosed in a printed publication;
2. the design was displayed at an exhibition held or recognized by the government; or
3. the design was disclosed without the consent of the applicant.
An applicant claiming the occurrence of the events as set forth in Subparagraphs 1 and 2 of the preceding paragraph shall state the fact and the relevant date in the patent application at the time of filing and provide document(s) of proof within the time period specified by the Specific Patent Agency.
The preceding paragraph shall not apply to public disclosure in patent gazettes in the ROC or other countries based on the intention of the applicant.
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III. |
The Intellectual Property Court Shall Take Into Account Any New Evidence Submitted On The Same Grounds For The Invalidation Or Revocation Prior To The End Of The Oral Argument. |
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Parties: |
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Plaintiff -- the Invalidation petitioner
Defendant -- Taiwan Intellectual Property Office (TIPO)
The intervening party -- the Patentee of the patent at issue
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Plaintiff’s claim: |
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The patent at issue could be proved lacking novelty or an inventive step by Evidence 2, 4, 5, 10 or the combination thereof as well as Evidence 2 in the remanding case. |
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Fact: |
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The intervening party filed a patent application on May 08, 1998 which was granted as a patent (hereinafter "the patent at issue") by the defendant. The plaintiff filed an invalidation action against the patent at issue based on the ground that it violated Article 20 I (1) and II of Patent Act effective in 1994, at the time of the patent at issue being approved. After receiving the notice of invalidation action, the intervening party filed a request of post-grant amendment of the patent at issue and was approved by the defendant. Consequently, the defendant examined the invalidation action according to the amended version of the patent at issue and considered the invalidation action groundless by a decision.
The plaintiff dissatisfied with the decision and filed an appeal up to the defendant's superior authority, MOEA, but MOEA sustained the defendant’s decision and dismissed the appeal. Then, the plaintiff filed an administrative litigation to IP court.
In the first instance, IP Court withdrew the appeal decision made by MOEA as well as the original decision made by the defendant, and remanded to the defendant for another disposition according to the legal opinions made in its adjudication (No. 9, 2013). But, the intervening party dissatisfied with the adjudication and filed an appeal up to the Supreme Administrative Court. Then, the Supreme Administrative Court revoked the adjudication of IP Court and remanded to IP Court for another adjudication. Finally, IP Court made a ruling to dismiss the plaintiff's action.
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IP Court's viewpoints: |
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Whether the patent at issue had novelty and/or an inventive step, it should be judged according to the Patent Act effective at the time of the patent at issue being approved, i.e. the Patent Act effective in 1994, but not the Patent Act effective when the invalidation action was filed. |
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2. |
Article 33 I of Intellectual Property Case Adjudication Act stipulates that the Intellectual Property Court shall take into account any new evidence submitted on the same grounds for the invalidation or revocation prior to the end of the oral argument. Evidence 2 in the remanding case was submitted by the plaintiff during the administrative action of the patent invalidation and prior to the end of the oral argument, which was the new evidence submitted for the same ground that the claims of the patent at issue lacked an inventive step. According to the said stipulation, the IP Court should still take Evidence 2 in the remanding case into account. However, neither Evidence 2, 4, 5 and 10 or the combination thereof nor Evidence 2 in the remanding case could prove that the patent at issue lacked novelty or an inventive step, so it was not contrary to the law that the defendant considered the invalidation groundless by a decision. |
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Source: IP Court adjudication No.4, 2015
(http://jirs.judicial.gov.tw/Index.htm)
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Trademark |
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Trademark Fair Use: Buying the Genuine Products and indicating the Source of the Products by using the Trademark |
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Facts |
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The Plaintiff: CHANEL Cosmetics Limited Company (hereafter called “CHANEL”)
The Defendant: POYA INTERNATIONAL CO., LTD. (hereafter called “POYA”)
The Defendant celebrated its 30th anniversary and bought CHANEL products for the event of lucky draw. The event was named “Fashion Anniversary with Classical CHANEL”. Without the Plaintiff’s consent and the license of using their marks, “POYA” used lots of marks, picture of products and devices of CHANEL on its commercial signs, banners, stickers, standing signs, catalogues, website and fan page of facebook. Thus, CHANEL asked POYA to stop using their marks, to destroy all relevant goods, to cancel the domain name of the event, paying three millions NT dollars as compensatory damages (NTD3,000.000) and to publish the verdict on the newspaper according to Trademark Act Article 68 (1) & (2) , 69.I & II & III and 70, etc. The Defendant, POYA, claimed that the “event” at issue is not an act of trademark use but a “Fair Use” that regulated in Trademark Act Article 36 I (1) Meanwhile, the Defendant also alleged that the “exhaustion doctrine” should be applied to this case under the Article 36 II .
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Intellectual Property Court’s viewpoints |
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Trademark Act Article 36I (1): “A registered trademark shall not entitle the proprietor to prohibit a third party from: (1) indicating his/her own name, or the term, shape, quality, nature, characteristic, intended purpose, place of origin, or any other description in relation to his/her own goods or services, in accordance with honest practices in industrial or commercial matters and not using it as a trademark”
Verdict No. 98. 1487 of Supreme Administrative Court: “A trademark is used for distinguishing the goods and services of a commercial entity. A trademark should be distinctive and be capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings. The act that for the purpose of distinguishing goods or services, we call a kind of trademark use. After reviewing the purpose and the process of the act, if the act is merely a description of the goods and services without the intention of using the mark (intent to use), it should be regarded as a common use but a trademark use .”
Though “POYA” used CHANEL trademarks on its commercial signs, banners, stickers, standing signs, catalogues, website and fan page of facebook, “POYA” also showed its own marks “POYA” and “寶雅” simultaneously and apparently thereon. Furthermore, the slogan “Lucky Draw of Classical CHANEL” were arranged to be accompanied with other slogans “寶雅POYA Fashion Anniversary” and ‘POYA 30th Fashion Anniversary” so that the costumers would easily understand that the CHANEL products were used as prizes of the lucky draw for the event. The Defendant further submitted commercial invoices proving that the CHANEL products were bought from the CHANEL counter of department store. So, the Defendant has no intention to mislead the customers that the CHANEL products were from “POYA” store and the consumers can recognize clearly that products of “POYA” have nothing to do with CHANEL. Therefore, the use of CHANEL trademarks should be deemed as Fair Use in good faith.
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Source: TIPO Newsletter published on September 5, 2016 https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep9864.htm |
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II. |
Can The Use Of The Title Of The Facebook Group Be A Sufficient Use Of The Trademark? |
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(“婚禮”is disclaimed)
Trademark at issue
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Fact: |
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The company,VERYHUMAN.COM INC.(hereafter “the appellant”), set up an website called “veryWed 非常婚禮” in August of 2000 and also started running a Fan Page “veryWed非常婚禮臉書粉絲團” on Facebook since November of 2009. The appellant later on filed an trademark application for Trademark at issue on the services “Presentation of goods on communication media, for retail purposes; Price comparison and evaluation of various products; Providing business information; online shopping and etc” in Class 35 and the said application was registered on November 16, 2010.
An individual, Lee (hereafter “the Appellee”) started a Facebook group titled “非常婚禮-婚紗-飾品-攝影-全新、二手商品交流區社團(hereafter “the group at issue”)” in which the Appellee demonstrates goods like wedding dresses, accessories and gowns, provides information of goods and processes the online selling activities to nonspecific consumers online.
Based on the Articles 68 (3) and Article 69 I & III of the Trademark Act, the appellant filed an invalidation to demand the Appellee to stop the infringement and compensate for the damage.
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Article 68 Infringement of registered trademark |
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Any of the following act, in the course of trade and without consent of the proprietor of a registered trademark, constitutes infringement of the right of such trademark: |
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(1) |
using a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered; |
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(2) |
using a trademark which is identical with the registered trademark and used in relation to goods or services similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers; or |
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(3) |
using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers. |
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Article 69 Exclusion, prevention and damages of infringement; time limit to demand damages |
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A proprietor of a registered trademark is entitled to demand a person who infringes or is likely to infringe the trademark right to stop or prevent such infringement.
When making a demand pursuant to Paragraph 1, the proprietor is entitled to demand for destruction of infringing articles and the materials or implements used in infringing the trademark. However, the court may order other dispositions as it considers necessary after taking into account the need for proportionality between the seriousness of the infringement and the interests of third parties.
The proprietor is entitled to demand the infringer who knowingly, or with reasonable grounds to know, infringed such trademark rights to pay the proprietor damages.
The rights to demand referred to in the preceding paragraph shall become extinguished if not exercised within two years from the date on which the proprietor become aware of the damage and the person liable for damages. This right shall also become extinguished if it is not exercised within ten years from the time of infringement.
The IP court’s initial judgment was against the Appellant. The Appellant was dissatisfied with IP court's decision so filed an appeal.
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IP Court’s viewpoints |
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As ruled in Articles 68 (3) of the Trademark Act, in the course of trade and without consent of the proprietor of a registered trademark , using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated and causing a likelihood of confusion on relevant consumers constitute infringement of the right of such trademark. Whereas, the “use” of the similar trademark is one of the prerequisites for constituting the aforesaid infringement. Secondly, according to Articles 5 of the Trademark Act, the “use” of a trademark should conform the following criteria: |
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The one using the trademark is on the purpose of selling the goods/services |
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The deed of active use of the trademark |
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The presentation of the mark is capable of being recognized by relevant consumers as a trademark |
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Article 5 Use of trademark |
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Use of a trademark” means any of the following act, in the course of trade, where such trademark is capable of being recognized by relevant consumers as a trademark: |
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(1) |
to apply a trademark to goods or packaging or containers thereof; |
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(2) |
to possess, display, sell, export, or import the goods referred to in the preceding subparagraph; |
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(3) |
to apply a trademark to articles relating to the provision of services; or |
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(4) |
to apply a trademark to commercial documents or advertisements relating to goods or services. |
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The preceding paragraph shall also apply to acts performed by digital audio-visual means, through electronic media, on the Internet, or through other media. |
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After the examination, it is proved that the Group at issue is not providing a online space for the members’ sharing concerning the wedding related experience. Instead, for the purpose of trade, the photos/selling prices/condition of shipment of the goods are shown on the web pages of the Group at issue where the title of the Group at issue is adopted as an indication of origin of the goods. The aforesaid fact meets the elements as ruled in Articles 5. I.(3) & (4) of the Trademark Act. Hence, the use of the title of the Group at issue is capable of being recognized as a trademark.
The title of the Group at issue and the trademark at issue are in the same font in Chinese which results in the similarity. Furthermore, the Group at issue sells wedding dresses, accessories and other goods which are similar to those services of Class 35 designated in the registration of the trademark at issue. These circumstances may mislead the relevant consumers to assume that the goods/services which the Appellee sells via the Group at issue and the designated services of the appellant’s registration of the trademark at issue are from the same service provider or the two parties are affiliated Companies. The above facts cause the likelihood of confusion on relevant consumers and infringe the right of the trademark at issue . Accordingly, the IP Court accepts the appellant’s appeal.
In conclusion, placing the trademark on the title of the Facebook Group enables consumers to recognize the trademark from web pages so can be deemed sufficient use of the trademark to cause the infringement of other's registered trademark if this is the case. |
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Source: TIPO Newsletter published on July 5, 2016
https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep9735.htm
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