New Measures for Technical Evaluation Report for Utility Model Patent Have Been Effective on July 1, 2019

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Patent
 
New Measures for Technical Evaluation Report for Utility Model Patent Have Been Effective on July 1, 2019
 
TIPO has revised the measures for technical evaluation report for utility model patent to provide more sufficient opportunities for the patentee to file a response to explain the technical features of the utility model patent in conditions of unfavorable technical evaluations. 
 
The main modifications are briefly introduced below:
 
1. Before the modification, when a technical evaluation report for a utility model patent is requested, only when all claims are deemed to lack novelty or inventive step (comparison result codes 1~3) will TIPO issue a “Notice of Citation of Technical Evaluation Report” for the patentee of the utility model to file a response. In order to provide the patentee with a complete opportunity to explain before the issuance of the result of the technical evaluation report, it is now modified that as long as any of the claims is deemed to lack novelty or inventive step, a “Notice of Citation of Technical Evaluation Report” will be issued for the patentee to make a response. This new regulation provides the patentee with opportunities to submit further technical explanations for any of the claims with unfavorable technical evaluations. 
   
2. Before the modification, if TIPO has already issued a technical evaluation report for a utility model patent and it is requested for a second technical evaluation report for the same utility model patent, TIPO would not issue a “Notice of Citation of Technical Evaluation Report” for the patentee of the utility model to file a response for the second time unless there are different citations or there are post-grant amendments to the utility model patent. After the modification, for the claims that receive unfavorable results in the first technical evaluation report (e01), if these claims are still evaluated as lacking patentability in the second technical evaluation report (e02), TIPO will issue another “Notice of Citation of Technical Evaluation Report” for the patentee of the utility model to file a response to further explain the technical features. This new regulation provides the patentee with opportunities to sufficiently express and explain the technical features and thus can further ensure the accuracy of the technical evaluation report for the utility model patent.
 
 
Source: https://www.tipo.gov.tw/ct.asp?xItem=708992&ctNode=7127&mp=1

Trademark
 
“Guidelines for Third-Party Observations on Trademark Applications for Registration” Have Been Announced to Implement on June 20, 2019
 
In order to cover shortage of information during the trademark examination, enable examiners to investigate the evidence ex officio, avoid applications filed in bad faith and enhance the validity of trademark registrations, Taiwan Intellectual Property Office (TIPO) prescribed , which have been announced to implement on June 20, 2019.
 
Key points of  are briefly introduced below:
1. Any third party other than the applicant can submit an observation which is not necessary to bear the name of the third party.
   
2. The third-party observation shall be submitted before a disposition is rendered.  The observation shall be left unattended to when it is submitted after the application is withdrawn, inadmissible or has received the disposition of approval or refusal. 
   
3. The third party may submit the observation together with evidence as proof claiming that a trademark shall not be registered because one or more circumstances under Paragraph 1 or 3 of Article 29, Paragraph 1 or 4 of Article 30, or Paragraph 3 of Article 65 on which the trademark is not registrable exist.
   
4. The third-party observation shall be submitted in written form. If it is submitted by facsimile, “the third-party observation” and “the application number” shall be indicated in the written form to enable TIPO to correctly assign and deal with it.  Examiners may not adopt the third-party observation and relevant proof as reference materials for examination of trademark applications if they are not submitted in written form or are submitted in form of compact disks or digital data. 
   
5. After submitting the third-party observation, the third party may supplement additional observations and proof before the disposition of approval or refusal is rendered. 
   
6. When submitting the observation on the trademark application, the third party may attach proof according to the following circumstances respectively:
   
  (1)
Having no distinctiveness:
 
When claiming a trademark lacking distinctiveness in the third-party observation, the third party shall describe how competitors in the same trade use relevant word, device or symbol, and attach supporting proof, such as objective factors and evidence about the relation between the trademark and the designated goods or services, the use by competitors in the same trade, the approach by which the applicant uses the trademark, and the actual trading situations.
     
  (2)
Being identical with or similar to another person’s earlier used trademark:
 
When attaching evidence of use of another person’s trademark, such evidence shall be objectively accountable and the following matters shall be paid attention to: 
     
    (i) Displaying the trademark on the evidence of use which shall meet the definition of trademark use in Article 5 of Trademark Act;
       
    (ii) Displaying the date and user on the evidence of use which shall comply with general practice in the trade;
       
    (iii) Regarding newspapers or magazines, there shall be complete information about the source, volume, date of publication and page number, etc.
       
    (iv) For evidence of use on websites, its accuracy and objectivity shall be prudently considered.
       
  (3)
Having intent to imitate an earlier used trademark;
 
When claiming a trademark is filed in bad faith in the third-party observation, the third party shall submit objective evidence proving that the applicant has contractual, regional, or business connections or any other relationship with the proprietor of the earlier used trademark as follows:
     
    (i) Correspondence, transaction documents or purchasing data between the applicant and the proprietor of the earlier used trademark;
       
    (ii) Documents showing the relationship or contractual relationship between the applicant and the proprietor of the earlier used trademark;
       
    (iii) Documents showing the applicant’s business located in the same or nearby streets with the proprietor of the earlier used trademark;
    (iv) Documents showing the investment relationship between the applicant and the proprietor of the earlier used trademark and the applicant once being the shareholder, representative, manager, employee of the proprietor of the earlier used trademark, etc.;
       
    (v)
Other evidence showing the applicant being aware of the existence of the earlier used trademark;
The applicant may be aware of the existence of the earlier used trademark due to business relationship or other relationship.  If the third party claims that the applicant and the proprietor of the earlier used trademark are competitors in the same trade, he/she shall submit objective facts and evidence showing how the proprietor of the earlier used trademark actually uses the trademark in the market, including the period, area and scope, as well as that its mark has accumulated certain reputation for the examiner’s comprehensive consideration. 
       
  (4)
Being identical with or similar to another person’s well-known trademark or mark:
 
When claiming a trademark is identical with or similar to another person’s well-known trademark or mark in the third-party observation, the third party shall submit evidence which can sufficiently prove that another person’s trademark has been well-known. 
     
  (5)
An infringement of another person’s copyright, patent right, or any other right
 
When claiming a trademark infringes another person’s copyright, patent right, or any other right in the third-party observation, the third party shall submit a certificate to the effect that the civil judgment has become final and binding, or the documentary evidence showing that an infringement litigation has been initiated with a competent court.  When the litigation is pending at the court but no final judgment has yet been rendered and where the status is confirmed as factual by the examiner in charge of the trademark at issue, the examination of the trademark application may be suspended until there is a final judgment of the infringement litigation. 
     
  (6) Other objectively concrete facts and evidence which are sufficient to prove the trademark application violates any grounds for refusal of registration stipulated in Trademark Act.
       
7. The examiner shall review the third-party observation and determine whether the content given is concretely specified as well as whether the objective facts and evidence are sufficient to prove that the trademark application violates any grounds for refusal of registration.  If the examiner fails to inform the applicant of the cited reference for him/her to submit opinions on the intended refusal, such cited reference cannot be adopted as grounds to make the disposition of refusal. 
   
8. No matter whether the third-party observation is considered or not, the examiner does not have to inform the third party nor have to inform the third party of the disposition of the trademark application, for the third party is not the concerned party in the trademark prosecution
   
9. If the third party is not satisfied with the disposition for the approval of the trademark application, he/she shall express his/her opinions by filing an opposition or invalidation application. 
   
10. The guidelines in relation to a trademark shall apply mutatis mutandis to a certification mark, collective membership mark and collective trademark.
   
Source: https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep14012.htm#middle

IP FAQs
 
Differences between “NICE classification” and “the practice of TIPO
 
TIPO generally follows NICE classification of the designated goods and services. However, some descriptions of the designated goods and services in NICE classification are not acceptable in Taiwan because some of them are not definite enough under the present practice in Taiwan. We will continuously provide the list of descriptions in NICE classification which are not acceptable along with our suggestions of how to amend these descriptions in accordance with the regulation in Taiwan. 
 
In this issue, we provide the list of some examples in Class 07 as below for your reference.
 
Nice (Indication of Goods) Our suggestions
          Class 07
agitators Please be informed this item is too broad to be accepted under the practice in Taiwan. If the item is to be kept in class 7, it should be specified into concrete ones, such as “Pastry mixer”, “Blenders, electric, for household purposes”, “Churns”, “Concrete mixer [machines]” and “Whisks, electric, for household purposes”. 
basket presses Please be informed this item is indefinite under the practice in Taiwan. If the item is to be kept in class 7, it should be specified into concrete ones, such as “Wine presses”, “Sugar cane presses”, “Feed extractor” and “Packing squeezer”. 
centrifugal mills Please be informed this item is too broad to be accepted under the practice in Taiwan. If the item is to be kept in class 7, it should be specified into concrete ones, such as “Food powder grinding machine; Rice grinding machine; Juicer/pump grinder; Soybean grinder; Coffee grinders, other than hand-operated; grating machines for vegetables; Millstones; Stone tile buffing machine; Mills for household purposes, other than hand-operated; pepper mills other than hand-operated; Household grinder; Kitchen grinders, electric”.
cutters [machines]
cutting machines
 
Please be informed this item is too broad to be accepted under the practice in Taiwan. If the item is to be kept in class 7, it should be specified into concrete ones, such as “Vegetable cutter; Fleshing machines; Meat slicing machine; paper tubing cutting machine; Industrial electric paper cutter; Chinese herb slicing machine; Bolt cutting machine; Metal cutting machine; Plastic sheet cutting machine; Electric arc cutting apparatus”.
filtering machines Please be informed this item is too broad to be accepted under the practice in Taiwan. If the item is to be kept in class 7, it should be specified into concrete ones, such as “Pond filtration machine; Automatic fuel filtration device; Fuel filtration device; Gas filtration device; Liquid filtration device; Superheaters; Filters [parts of machines or engines]; Filters for cleaning cooling air, for engines”
finishing machines Please be informed this item is too broad to be accepted under the practice in Taiwan. If the item is to be kept in class 7, it should be specified into concrete ones, such as “Automatic chipset sorting machine; Sorting machine for calendar”
kitchen machines, electric Please be informed this item is too broad to be accepted under the practice in Taiwan. If the item is to be kept in class 7, it should be specified into concrete ones, such as “Electric egg beater; Can openers, electric; Electric fruit peeler; electric salad mixer; Washing machines; spin driers [not heated]; Dishwashers; Fruit presses, electric, for household purposes”
knives, electric Please be informed this item is indefinite and may be classified to different classes under the practice in Taiwan. If the item is to be kept in class 7, it should be specified into concrete ones, such as “Scissors, electric and Industrial cutters”.



 

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