JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

The Amendment of the Patent Act Will Be Implemented on November 1, 2019

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Patent

The Amendment of the Patent Act Will Be Implemented on November 1, 2019

The amendment of the Patent Act (hereinafter as “the Amendment”) promulgated on May 1, 2019 will be implemented on November 1, 2019. The new regulations include:

1.	A divisional application can be filed within three months from the receipt of an approval decision in both the preliminary examination stage and the re-examination stage. This applies to a utility model patent application as well.

2.	For a patent invalidation, supplementary arguments and evidence shall be submitted within three months after the invalidation is filed, and documents submitted beyond the deadline shall not be examined. Also, the regulation is added regarding the permitted period for the patentee to file a request for amendments in the invalidation proceedings.

3.	A request for a post-grant amendment for a utility model patent can be filed only at the regulated time period, and all post-grant amendments will be examined substantively.

4.	The term of protection for design patents will be extended from 12 years to 15 years.

The regulations applied for the transitional period before the implementation of the Amendment are as follows.

I.	Divisional application after the approval decision of a patent
	(1)	If an approval decision of the preliminary examination or the re-examination of an invention or utility model patent is served before the implementation of the Amendment, and the date of service of the approval decision is less than three months from the implementation date of the Amendment, it is allowed to apply for divisional application for the approved patent within 3 months after the date of service of the approval decision.

	(2)	If an approval decision of the preliminary examination or the re-examination of an invention or utility model patent is served before the implementation of the Amendment, and the date of service of the approval decision is more than three months from the implementation date of the Amendment, it is NOT allowed to apply for divisional application for the approved patent.

II.	Supplementation of arguments or evidence in a patent invalidation
	For a patent invalidation that has been applied before the implementation of the Amendment and the official decision has not yet been made after the implementation,
	(1)	All supplementary arguments or evidence provided by the invalidation requester before the implementation of the Amendment shall be taken into consideration.

	(2)	Supplementary arguments or evidence provided by the invalidation requester within 3 months after the invalidation is filed shall be taken into consideration.

	(3)	Supplementary arguments or evidence provided by the invalidation requester in more than 3 months after the invalidation is filed shall NOT be taken into consideration.

III.	Request of amendments in the invalidation proceedings
	For a request of post-grant amendments of an invention, utility model or design patent in the invalidation proceeding, if the request is applied after the implementation of the Amendment, it shall be bound by the permitted time period regulated in the Amendment. However, the request for a post-grant amendment for a patent involved in a litigation case is not restricted by the regulated time period.

IV.	Request of post-grant amendments unrelated to invalidation proceedings
	(1)	After the implementation of the Amendment, there is no restricted time for the request of post-grant amendments of an invention or design patent unrelated to the invalidation proceedings.

	(2)	For the request for a post-grant amendment of a utility model patent filed before the implementation of the Amendment, it shall be examined substantively after the implementation of the Amendment, and it is not required to pay the official fee.

	(3)	For the request for a post-grant amendment of a utility model patent filed after the implementation of the Amendment, it shall be bound by the permitted time period regulated in the Amendment and an official fee of NTD2,000 is required.

V.	Extension of the term of design patents
	(1)	If a design patent has expired before the implementation of the Amendment, the patent term remains 12 years.

	(2)	If a design patent is still valid on the implementation date of the Amendment, the patent term will be automatically extended to 15 years.

	(3)	For a design patent whose term has not expired on the implementation date of the Amendment but whose patent right has become extinguished because the annuity is not paid within the time period and the patentee unintentionally fails to pay the annuity within the time period for late payment, if the patentee applies for reinstatement of the patent right within one year after the expiration of the time period of late payment by paying triple the amount originally due so that the design patent becomes valid at the implementation date of the Amendment, the design patent term will be extended to 15 years.

Source: https://www.tipo.gov.tw/ct.asp?xItem=708992&ctNode=7127&mp=1

New Measures to Manage Design Patent Application Priority Claims Have Been Effective on August 1, 2019

The original regulations of design patent priority claims based on the previous Patent Examination Guidelines stated that: "The design disclosed in the drawings of a design patent application is required to comply with the requirement of 'one design for one application.' Accordingly, a design patent application can only claim one priority date for the claimed design. Claim to multiple priorities or a partial priority should not be accepted." "If a pending application or prior art - whose filing date or date of disclosure falls between the priority date and the filing date of the later-filed application - is found during the process of searching, it is required to check if the priority claim(s) is valid in view of the priority documents. In addition, reasons are required to be given if the priority claim(s) is deemed invalid. If necessary, the applicant should be notified and required to submit a full or part of Chinese translation of the priority documents. If such Chinese translation of the documents fails to be submitted, the priority claim(s) should not be accepted." That is, in the past, when the TIPO conducted substantive examination of a design patent application, it would examine whether the design disclosed in the claimed priority case is the same as the design application as filed. If not, the TIPO will issue an official notice requesting the applicant to respond. If a design application is found to claim multiple priorities, an official notice will also be issued to request the applicant to choose one of the priorities. The TIPO announced on July 12, 2019 a new measure in managing priority claims of a design patent application that: " In the future, the examiner will only examine the priority documents to decide whether the priority could be claimed when the date of application or publication of a prior application or the relevant data is discovered between the claimed priority date and the filing date of a later application. In principle, the priority claim will be published in the Patent Gazette as requested by the applicant if the above-mentioned condition is not found.” This measure has been effective on August 1, 2019.

The new measures are explained as follows:

1.	Regarding the priority claim of the design patent, the guidelines of INID (Internationally agreed Numbers for the Identification of (bibliographic) Data) do not regulate the number of priority claims of the design patent. Also, referring to the practices of the United States and Japan, in principle, there is no substantive examination on the validity of the priority claim. Instead, the priority claims that the applicant asserts will all be published in the Patent Gazettes. Further, the TIPO currently also adopts the same measures for the invention patent. Therefore, the TIPO announced that for the priority claim of the design patent in Taiwan in the future, only when the date of application or publication of a prior application or publication of the relevant data is discovered between the claimed priority date and the filing date of a later application will the examiner examine the priority documents to decide whether the priority could be claimed. In principle, the priority claim will be published in the Patent Gazette as requested by the applicant if the above-mentioned condition is not found.

2.	If the applicant has claimed multiple priorities at the same time, all the priority claims will be published in the Patent Gazette as the aforementioned principle. However, it does not mean that the multiple priorities or a partial priority of a design patent can be recognized. Only when a prior application is discovered between the claimed priority date and the filing date of a later application will the examiner substantively examine whether the design as disclosed in the claimed priority case(s) is consistent with the design as filed.

Source: 1. https://www.tipo.gov.tw/ct.asp?xItem=713648&ctNode=7127&mp=1 2. Design Patent Examination Guidelines

Trademark

Notices for Trademark Cases related to Article 30.1 (8) of Trademark Act

TIPO (Taiwan Intellectual Property Office) held propaganda in 2017 to specifically explain the key points of Article 30.1 (8) of Trademark Act and the relevant regulations issued by Ministry of Health and Welfare. Recently, we noticed that the TIPO issues Office Actions or Formal Rejections based on the Article 30.1 (8) of Trademark Act more frequently. It seems that the examiners tend to follow the guidelines more strictly. We herewith name some examples for your reference.

Trademark Act Article 30.1 (8): A trademark shall not be registered if the mark is likely to mislead the public as to the nature, quality, or place of origin of the goods or services.

In other words, false association between the trademark and the goods/services as well as misleading indications on the trademarks are forbidden. Moreover, the issue of misleading cannot be overcome by disclaiming the exclusive right of the trademark.

Based on the notice of the TIPO, the judgments made based on Trademark Act, Health and Welfare Act, Fair Trade Act and Consumer Protection Act are different. Especially, the Health and Welfare Act applies a stricter standard. Although a trademark is allowed to be registered, when it comes to its actual use, the registrant may still be punished when the trademark violates other laws.

In this issue, we would like to present some examples which are deemed to violate part of Article 30.1 (8)of the Trademark Act, “A trademark shall not be registered if the mark is likely to mislead the public as to the place of origin” in the table below.

Application number	Trademark	Goods/Services	TIPO’s opinion	Current status
107045705	Bonn Beer	Beer; Malt beer; Draft beer; Light beer; Ginger ale; Beer wort; extracts of hops for making beer; Fruit veverage with light alcohol etc.	The examiner indicates that Bonn was the capital of West Germany and is a city on the banks of the Rhine in the German state of North Rhine-Westphalia as well as one of the oldest cities in Germany. Also, Germany is famous for its beer products and the logo of the trademark is made with lines in three colors, i.e. black, red and gold which are the representative colors of Germany. The part “Bonn” of the trademark and the logo with the designated the goods in class 32 have the issue of misleading because consumers will deem that the products come from Germany, specifically from this region of Germany.	Formal Rejection is issued.
107021325	PARIS-VENISE	Lipstick; nail polish; eye shadow; soap; perfumes; deodorants for personal use; shampoos; bath gel etc.	The examiner deems that the part “VENISE” is the French for Venice, a city in northeastern Italy, which is a famous tourist attraction location well-known for the consumers in Taiwan. Since the applicant already indicated in the specification of the goods that all of the above products are from France or made in France, it means that none of the designated goods are from Venice of Italy or related to Venice. It will cause the issue of misleading of origin.	With the submitted evidence, the applicant argued that when using this trademark, it will combine with “CHANEL(PARIS)” which will clearly state that the products are from France. However, the examiner deems that because the mark as applied consists of merely “PARIS-VENISE”, it will cause the issue of misleading because the products in fact are not related to Italy. Formal Rejection is issued.
107026641	LONDON BADGE	Class 9: Mouse [data processing equipment]; Computer; Sunglasses; Headphones etc. Class 14: Key rings [trinkets or fobs]; Key chain [trinkets or fobs] etc. Class 16: Posters; manuals etc. Class 18: Travel bags; sports bags etc. Class 25: Clothing and hats etc. Class 28: Plush toys; musical toy etc. Class 35: Sales promotion for others throgh E-sport team etc. Class 41: Entertainment services etc.	The examiner indicates that London is the capital of England and has significant position in the fields of culture, education, entertainment, fashion, academy and travel. The designated goods and services will cause the issue of misleading of the place of origin because consumers will assume that the goods and the services are from England, specifically from London.	Formal Rejection is issued.

Other examples to the terms of the origin contained in a trademark are as follows:

(1)

Appl. No. 105014070 for

(SWISSMOBILITY & device) in class 18 → This mark was rejected because of the word “SWISS” which is likely to cause the misunderstanding of the place of origin.

(2)

App. No. 105058972 for

(Beypazari 貝伊帕莎) in class 32 → This mark was rejected because of the term “Beypazari” is a name of a city in Turkey. Thus, it is likely to cause the misunderstanding of the place of origin.

(3)

Even though the term of a name of place does not have a direct relation to the designated goods, the regulations are still applicable due to the possible misleading. For example, a trademark contains the term “Attica” (i.e. a place in Greece) and designates the goods of “office desks”. Though “Attica” in Greece is not famous for manufacturing office desks, the use of a name of place would cause possible misunderstanding that the office desks under the trademark are from Attica.

Conclusion:

Based on our experience and the current practice of the TIPO, there are several ways to overcome this issue. The applicant can submit the Certificate of Origin to prove that the place of origin of the designated goods/services is legit and/or agrees to limit the specification of goods/services by adding the explanation such as “all of the above goods/services are from xx” based on the examiner’s request. In some exceptional cases, the examiner may just agree to disclaim the exclusive right of the wordings indicating the place of origin. It is up to the different examiner’s viewpoints.

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 08 as below for your reference.

Nice (Indication of Goods)	Our suggestions
Class 08
cutters*	Please be informed these items are too broad to be accepted under the practice in Taiwan. If any of these items is to be kept in class 8, it should be specified into concrete ones, such as: flower cutter; wire cutter; hand-operated cutter; tube cutters [hand tools]; hoop cutters [hand tools]; milling cutters [hand tools]; screw-thread cutters [hand tools]; box cutters; pizza cutters, non-electric; non-electrical egg cutter; wine bottle foil cutters, hand-operated; Vegetable cutting Tool; Universal cutting pliers; Dredge; Wedge; Ski edge sharpening tools, hand-operated; Hunting knives; Pruning knives; Budding knives; Drawing knives; Palette knives; Farriers' knives; Hobby knives [scalpels]; Vegetable knives; Choppers [knives]; Scaling knives; Mincing knives [hand tools]; Ceramic knives.
cutting tools [hand tools]
edge tools [hand tools]
knives*
Penknives
priming irons [hand tools]	Please be informed that this item is not acceptable under the practice in Taiwan.
cutlery*	Please be informed these items are too broad to be accepted under the practice in Taiwan. If any of these items is to be kept in class 8, it should be specified into concrete ones, such as: Spatula; Table knife; Fruit knife; Cake knife; Fruit paring knife; Plastic table knives; table knives for babies; Forks; Fruit fork; Plastic table forks; forks for babies; Spoons; Spoon; Plastic spoons; spoons for babies; Kitchen knife; Food carving knife; Food pairing knife; Teaspoon; Spoons; Bread knife; Cheese knife; Coffee spoon; Butter fork; Butter knife.
silver plate [knives, forks and spoons]
fulling tools [hand tools]	Please be informed that this item is not acceptable under the practice in Taiwan.

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

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