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New Patentable Subject Matters for Design Patent in Taiwan (III)

[ February 2018 ] >Back
 

Patent
 
I. New Patentable Subject Matters for Design Patent in Taiwan (III)
 
 
  After the amendment of Patent Act in 2013, the design patent has been broadened to include more patentable subject matters in Taiwan. Partial designs become available for application. Icons and graphical user interface (GUI) can be protected as “Graphic Images Design”. Also, a set of designs can be filed in one design application. Further, the derivative design patents allow similar designs to have independent patent rights. These newly available patentable subject matters provide wider possibilities and choices for the applicants to better protect their designs. We will introduce these new patentable subject matters for design patent respectively and the related regulations that should be paid attention to at the filing stage. 

In this issue, we will focus on “Derivative Design Patent”, which allows similar designs to have independent patent rights.
   
  Derivative Design Patent
   
  The amendment of Taiwan Patent Act in 2013 has replaced the Associated Design Patent by the Derivative Design Patent. The derivative design patent allows the same applicant to file the original design application and derivative design application(s) for two or more similar designs. Generally, based on the first-to-file principle, when there are two or more identical or similar design applications independently filed, only the first application can be allowed. For two or more similar designs owned by the same applicant, the derivative design patent makes it possible to protect all of the similar designs, which is an exception to the first-to-file principle.
   
  The effect of an application of a derivative design patent
  1. The patent right of a derivative design patent can be enforced independently from the original design patent, and the derivative design patent has its own scope of similarity (range of protection).
     
  2. The patent term of a derivative design patent starts from its publication date and expires on the same date as its original design patent.
     
  3. Since the derivative design patent has its own range of protection, even if the original design patent right has become extinguished or has been invalidated, the derivative design patent is still in force without being affected by the extinguishment or invalidation of the original design.
     
  Related regulations of derivative design patent
  1.
Requirement for filing a derivative design patent:
    A derivative design patent shall be similar to the original design patent and owned by the same applicant. The filing date of a derivative design patent application shall be no earlier than the filing date of the original design patent application and no later than the publication of the original design patent.
     
  2. The determination of similarity of the original design and the derivative design:
    Only the similar designs can be applied as the original design and the derivative design. In determining the similarity of the original design and the derivative design, the similarity of the applied articles and the ornamental appearances between the original design and the derivative design will be taken into consideration.
     
    (1) Similarity of the applied article  
   
Original Design Derivative Design

The original design is “Handle of Spoon” and the derivative design is “Handle of Fork”. Both of the two designs are applied to the handle of tableware. Thus, the two designs are the same ornamental appearance applied to the similar article. They are similar designs that are allowed to be filed as the original design and the derivative design.
     
   
Original Design Derivative Design

The original design is “Handle of Spoon” and the derivative design is “Handle of Hammer”. The applied articles of the two designs are different in both the function and the usage. Thus, even though the two designs have the same ornamental appearance, since they are applied to dissimilar articles, they are dissimilar designs that cannot be filed as the original design and the derivative design.
     
    (2) Similarity of the ornamental appearance
   
Original Design Derivative Design

The original design and the derivative design are both “Lens of Camera”. The applied articles of the two designs are the same. The two designs are the same in the appearance but with difference in the size and relative positions. Thus, the two designs are the similar ornamental appearance applied to the same article. They are similar designs that are allowed to be filed as the original design and the derivative design.
   
II. A Memorandum of Understanding (MOU) on the Deposit of Biological Materials for the Purposes of Patent Procedure Officially Comes into Effect
 
 
 
Technical content of an invention patent application must be adequately disclosed in the specification when filing so that a person with ordinary skill in the field is able to understand the technique and accomplish the same based on the disclosed content. However, for patent application in relation to biological materials, if the biological material(s) are unavailable, it is difficult for the third party to carry the invention out based on the disclosed content because the biological materials usually are not easy to be reproduced. Currently, Article 27 of Patent Act reads: “When filing a patent application for invention involving a biological material or utilization of a biological material, the applicant shall, no later than the filing date, make a deposit of the biological material with a domestic depository designated by the Specific Patent Agency.
 
The Budapest Treaty ensures that an applicant, i.e. a person who applies for a patent, who is a member of the said Treaty, needs not to deposit the biological material(s) in all countries where he/she wants to obtain a patent. The applicant needs only to deposit the biological material(s) at one international institution recognized by the Budapest Treaty, and this deposit will be recognized in all member countries to the Budapest Treaty. Taiwan, however, is not a member of the Budapest Treaty so that we are unable to request the biological material deposited in the international institutions. In other words, besides the country which recognizes the deposit between Taiwan and their country, although the applicant has deposited the microorganisms before filing the patent application in a foreign country, he/she has to deposit the same microorganisms in Taiwan again, which causes the inconveniences of double depositing.
 
In response to the diversified international patent layout and expectations of patent applicants in Taiwan, and in order to extend the network of the deposit between Taiwan and other countries, after multiple negotiations, TIPO and UKPTO signed an MOU on deposit of biological materials for the purposes of patent procedure on December 1, 2017 which has come into effect immediately. This MOU is another milestone for TIPO in the field of cooperation with other IP authorities after TIPO facilitated the signing of a similar MOU between Taiwan and Japan in 2015.
 
Under the condition of the said MOU between Taiwan and the UK, Taiwanese applicants only need to deposit the biological material(s) in the Bioresource Collection and Research Center (BCRC) in Taiwan or in a deposited institution in the UK, and provide the certificate of deposit to TIPO or UKPTO. Both authorities will recognize the fact of the procedure, and it is not necessary to deposit the biological material(s) again. Also, for Taiwanese applicants or research institutions who need to apply for patent applications in multiple countries, they can now not only choose to deposit the material(s) in the international deposited institutions in Japan, but also choose to deposit the same in the institutions in the UK which helps to decrease the costs associated with depositing biological materials in multiple countries.
 
This MOU can not only provide multiple choices of deposited institutions for applicants, but also avoid the complicated procedures in the import or export of biological materials as well as avoid the risk of contamination by other microorganism during the transport. This helps to promote the development of patent layout in the field of biotechnology, pharmaceutical industries and food related industries. It will also help to raise the willingness of the investment of the applicants in the UK or other countries to file patent applications in Taiwan.
   
  https://www.tipo.gov.tw/ct.asp?xItem=650000&ctNode=7127&mp=1

Trademarks
 
I. Using Trademark “Fairly and in Good Faith” Means to Use One’s Own Trademark But Not to Use a Licensed Mark
 
 
 
   
  The plaintiff bought the subject mark in 2011. While purchasing the mark, the plaintiff has requested the defendant to stop using the mark verbally. Much earlier, the original trademark owner once issued cease and desist letters to the defendant to ask the defendant to stop using the trademark from 2001 to 2003. Since the defendant manufactured the counterfeit shoes products bearing the subject mark without the plaintiff’s consent or license, which has caused confusion to the consumers, the plaintiff claimed for compensation. 
   
  The Court’s Viewpoint
   1.
The defendant argued that they used the mark “fairly and in good faith” according to Taiwan Trademark Act Article 36.1 (III). The defendant alleged that they cooperated with the original trademark owner before 1999. At the beginning, the original trademark owner agreed that the defendant could use the subject mark on the shoes designed and manufactured by the defendant. However, the Courts indicated that the core value of “using fairly and in good faith” refers that one uses a mark for his own benefit and then the mark was registered by a third party later. That is, the concept of “using fairly and in good faith” excludes the using of a licensed mark. Therefore, the defendant’s prior use of the subject mark, which was a licensed mark, does not fall in the protection of “using fairly and in good faith”.
     
  2. The Police seized 9,576 pairs of the counterfeit shoes for the first time and 2,820 pairs for the second time. Since the amount is quite many, it is evident that the defendant’s purpose to possess the seized shoes is trading. The said situation constituted the infringement of trademark rights according to Taiwan Trademark Act Articles 5.2 and 68.1.
 
 
  https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10813.htm


 

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