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April 2017 - The Average First-Action Pendency for Patent Applications in Taiwan Declines to 20 Months

 

Patent
 
I. The Average First-Action Pendency for Patent Applications in Taiwan Declines to 20 Months
   
 
After TIPO started its fast-track measures and addition of manpower from 2010, TIPO concluded the examination of patent applications up to 384,786 cases in 2016, which is 19,046 cases more than the annual forecast, 365,740 cases and substantially exceeds the target performance in 2016.
 
By the end of 2016, the number of pending patent applications is lowered down to 50,293 cases which is remarkably reduced 110,025 cases comparing to the pending applications in 2011.
 
In comparison with USPTO, EPO, JPO, KIPO and SIPO, the average first-action pendency for patent applications in Taiwan is 20 months, which would be more beneficial for patent portfolio. 
 
The employment of the additional patent examiners in 2011 will expire in April 2017.  In view of the current manpower and pending applications, TIPO estimates the 20-month average first-action pendency for patent applications can be maintained by the end of 2017.
   
 
TIPO Newsletter March 05, 2017
https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10239.htm
   
II. If a patentee claims damage but cannot prove the amount of damage, the court can assess the contribution degree of the patent and decide the patent damages
   
  The plaintiff Company A, as the patentee of the patent at issue, claims the products of Company B infringe its patent and thus request for damages . Also, the plaintiff claims that the damages should be calculated based on the total sales volume of accused products multiplying the list price of the accused products. Company B, on the other side, argues that the patent at issue lacks an inventive step and should be invalid. Even if the patent at issue is valid, the total sales volume of the accused products is much less than the amount claimed by Company A. Also, the function of the accused products is achieved mainly not through the technical featured claimed by the patent at issue, but through the technical feature of the patent owned by Company B itself. Further, in practice, the actual sale price is always lower than the list price. Thus, Company B argues that the damages should be sales volume multiplying the actual sale price multiplying the contribution degree of the patent at issue. 
   
  IP Court’s viewpoint
 
I. When the patentee has proved injury, but is unable to or is under great difficulty to prove the exact amount, the Court shall take into consideration all factors and determine the amount of damages by its conviction, as stipulated by Article 222.II of Taiwan Code of Civil Procedure. 
 
II. As the actual sales volume of the accused products is hard to determine, the sales volume is then determined through the negotiation and under the consent of the two parties. Also, it can be seen from the manual, the function and the structure of the accused products that the accused products include both the technical features of the patent at issue and the technical features that are unrelated to the patent at issue. Thus, based on the technical report by China Industrial and Commercial Research Institute, the Court decides the contribution degree of the patent at issue to the list price of the accused products should be 5.68%. The damages should be calculated by the negotiated sales volume multiplying the sale price multiplying the contribution degree of the patent at issue.
   
 
TIPO Newsletter February 05, 2017
https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10184.htm#613563
   
III. Draft Amendment to Expansion of the “Grace Period” in Patent Act Will Come into Force on May 01, 2017
   
 
The draft amendment of Patent Act announced on January 18, 2017 has been ratified by the Executive Yuan to come into force on May 01, 2017.  
The main points of the draft amendment are:
   
  1. The “grace period” of applicability for invention and utility model is expanded from six months to twelve month.
   
 
 
  2. No matter whether the public disclosure of invention, utility model and design patents is based on the intention of the applicant or without the consent of the applicant, the grace period can be applied.
     
  3. It is no longer required to state the fact and the relevant date in the patent application at the time of filing.
     
  The amended articles will apply to patent applications filed on or after May 01, 2017.
   
 
TIPO News on April 07, 2017
https://www.tipo.gov.tw/ct.asp?xItem=619390&ctNode=7452&mp=1
   
IV. Amendment on multiple Articles of “Enforcement Rules of the Patent Act”
   
 
The Enforcement Rules of the Patent Act was initially promulgated on September 26, 1947 and has been effective from January 1, 1949. After 14 amendments, the date of the last amendment was June 29, 2016.
 
To conform to the newly amended regulation of Grace Period of the Patent Act on December 30, 2016, the Articles of the Enforcement Rules also need to be revised. The main point of the amendments is to delete related regulations concerning that Grace Period shall be claimed when filing a new application or a divisional application (Articles 13, 15, 16, 28, 46, 48, 49 and 58 are revised.). In addition, the effected date of this amendment will be also announced.
   
 
  Amendment Explanation
Article 13
        Where the priority is claimed pursuant to Paragraph 1, Article 28 or Paragraph 1, Article 30 of the Act, the so-called “prior to the filing of the patent application” in Article 22 of the Act, and the so-called “earlier-filed” in Article 23 of the Act shall mean prior to the priority date.

       The so-called “printed publication” in Article 22 of the Act shall mean documents or other storage media carrying information that is open to the public.
       
        The period of
six (6) twelve (12) months prescribed under Paragraph 3, Article 22 of the Act is calculated from the day following the occurrence of the facts listed in Subparagraph 1 through Subparagraph 4 of the same paragraph to the filing date prescribed under Paragraph 2, Article 25 of the Act.
 
To correspond with Paragraph 3 of Article 22 of Patent Act, text correction of Paragraph 3 has been made.
 
Paragraph 3 of Article 22:Where the invention was publicly disclosed based on the intention of the applicant or without the consent of the applicant, the invention 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 twelve (12) months after the date of the event's occurrence.
Article 15         Where a person has obtained the right to apply for patent due to inheritance, assignment, employment or capital contribution, with respect to the disclosure of the invention made by the predecessor, assignor, employee or appointee prior to the filing, the provisions of Paragraphs 3 and 4, Article 22 of the Act shall apply.
Article 22 of Patent Act has added Paragraph 4
“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.” 
 
When an invention is disclosed by laying open in the patent gazette in Taiwan or in a foreign country because of filing a patent application, it is made on the applicant’s own accord, so related regulations of Grace Period cannot be applied. Thus, Article 15 is amended accordingly.
Article 16
        When filing a patent application for invention, the application form shall specify the following items:
1. title of invention;
2. name and nationality of the inventor;
3. name, nationality, and domicile/residence or business establishment of the applicant; name of the representative, if any ; and
4. name and business establishment of the agent, if an agent is designated.

       Under any of the following circumstances, a statement shall be made at the time of filing:
1. where the facts prescribed under Subparagraphs 1 to 3, Paragraph 3, Article 22 of the Act are claimed;
2. 1. where the priority prescribed under Paragraph 1, Article 28 of the Act is claimed;
3. 2. where the priority prescribed under Paragraph 1, Article 30 of the Act is claimed; and
4. 3. where the declaration is made in respect of a patent application for invention and a patent application for utility model filed for the same creation on the same date as prescribed under Paragraph 1, Article 32 of the Act.
 
        Where an applicant claims the facts prescribed under Subparagraphs 1 to 3, Paragraph 3, Article 22 of the Act, each fact shall be stated at the time of filing. However, where the facts are closely and inseparably related, one may state only the fact of the first occurrence.
 
        Where each fact is stated according to the preceding paragraph, the period prescribed under Paragraph 3, Article 22 of the Act is calculated from the date of the fact of the first occurrence.
To correspond with Paragraph 4 of Article 22 of Patent Act that the proceeding elements of claiming Grace Period when filing an application are deleted, Subparagraph 1 of Paragraph 1 of Article 16 is deleted. 
 
When an invention is disclosed multiple times before filing, it is no need to state the facts when filing the application. Whether each disclosure is able to apply for the regulation of Grace Period, it should be respectively judged by Paragraphs 3 and 4 of Article 22, Patent Act.
 
Article 28
        When requesting for division of a patent application for invention, a request form shall be submitted for each divisional patent application, accompanied by the following documents:
 
1. description, claim(s), abstract, and drawing(s);
2. where the circumstance(s) prescribed under Paragraph 3, Article 22 of the Act is claimed in the original application, the document(s) of proof of the facts involved; and
3. 2. where the patent application for invention involves a biological material or utilization of a biological material, the certificate of deposit thereof.
 
        Under any of the following circumstances, a statement shall be made at the time of filing the request form for each divisional patent application:
 
1. where the circumstances prescribed under Subparagraphs 1 to 3, Paragraph 3, Article 22 of the Act are claimed;
2.1. where the priority prescribed under Paragraph 1, Article 28 of the Act is claimed; or
3.2. where the priority prescribed under Paragraph 1, Article 30 of the Act is claimed.

       The divisional patent application shall not differ from the original patent application in its type.
To correspond with Paragraph 4 of Article 22, Patent Act, it is no need to state the fact of disclosure when filing a divisional patent application as well.
Article 46
        Where the priority is claimed pursuant to Paragraph 1, Article 28 of the Act applicable mutatis mutandis under Paragraph 1, Article 142 of the Act, the socalled “prior to the filing of the patent application” in Article 122 of the Act and the so-called “earlier-filed” in Article 123 of the Act shall mean prior to
the priority date.

       The so-called “printed publication” in Article 122 of the Act shall mean documents or other storage media carrying information that is open to the public.

       The period of six (6) months prescribed under Paragraph 3, Article 122 of the Act is calculated from the day following the occurrence of the facts listed in Subparagraph 1 through Subparagraph 3 of the same paragraph to the filing date prescribed under Paragraph 2, Article 125 of the Act.
 
To correspond with Paragraph 3 of Article 122, text correction of Paragraph 3 has been made.
Article 48         Where a person has obtained the right to apply for patent due to inheritance, assignment, employment or capital contribution, with respect to the disclosure of the design made by the predecessor, assignor, employee or appointee prior to the filing, the provisions of Paragraphs 3 and 4, Article 122 of the Act shall apply. Article 122 of Patent Act has added Paragraph 4

“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.”  Thus, Article 48 is amended accordingly.  Please refer to the explanation for Article 15 above. 
Article 49
        When filing a patent application for design, the application form shall specify the following items:
 
1. title of design;
2. name and nationality of the designer; and
3. name, nationality, and domicile/residence or business establishment of the applicant; the name of the representative, if any; and
4. name and business establishment of the agent, if an agent is designated;

       Under any of the following circumstances, a statement shall be made at the time of filing:
1. where the facts prescribed under Subparagraphs 1 and 2, Paragraph 3, Article 122 of the Act are claimed; or
2. wWhere the priority prescribed under Paragraph 1, Article 28 applicable mutatis mutandis under Paragraph 1, Article 142 of the Act is claimed, a statement shall be made at the time of filing.

        When filing a patent application for derivative design, the application number of the original patent application for design shall be specified in the request form, in addition to the items stated in the preceding two paragraphs.

        Where an applicant claims the facts prescribed under Subparagraph 1 or 2, Paragraph 3, Article 122 of the Act, each fact shall be stated at the time of filing. However, where the facts are closely and inseparably related, one may state only the fact of the first occurrence.

       Where each fact is stated according to the preceding paragraph, the period prescribed under Paragraph 3, Article 122 of the Act is calculated from the date of the fact of the first occurrence.
To correspond with Paragraph 4 of Article 122, Patent Act, , Subparagraph 1 of Paragraph 2, Paragraphs 4 and 5 of Article 49 are deleted. Please refer to the explanation for Article 16 above.
Article 58
        When requesting for division of a patent application for design, a request form shall be submitted for each divisional patent application accompanied by the following documents:
1. description and drawing(s); and
2. where the circumstance(s) prescribed under Paragraph 3, Article 122 of the Act is claimed in the original patent application, the document(s) of proof of the facts involved.

       Under any of the following circumstances, a statement shall be made at the time of filing the request form for each divisional patent application:
1. where the facts prescribed under Subparagraph 1 or 2, Paragraph 3, Article 122 of the Act are claimed; or
2. wWhere the priority prescribed under Paragraph 1, Article 28 applicable mutatis mutandis under Paragraph 1, Article 142 of the Act is claimed, a statement shall be made at the time of filing the request form for each divisional patent application.

       The divisional patent application shall not differ from the original patent application in its type.
To correspond with Paragraph 4 of Article 122, Subparagraph 2 of Paragraph 1 and Subparagraph 1 of Paragraph 2 of Article 58 are deleted.
Article 90
        These Enforcement Rules shall enter into force on January 1, 2013.
The amendment of these Enforcement Rules shall enter into force following its promulgation date, except that Articles xxx amended on xxx shall enter into force on xxx.
 
   
   



 

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