Potential Revolutionary IP Reform in Taiwan ©
Autumn, 2007~Spring, 2008
The present article relates to intellectual property reforms in Taiwan, and to what will, might or should happen following such reforms.
We have a nearly stagnant economy for 8 years since the inauguration of the current president who has a character that all nationals should be subservient under his ruling strategies and he does not care otherwise whether Taiwan will assume any kind of sacrifice. Although we have various laws that are theoretically applicable to treat this hardship, none of them works out to have a successful cure.
One might feel strange why the preceding paragraph is relevant here since we are discussing about intellectual property practices or potential reforms. There is a Chinese saying that whenever one is well prepared to reach a higher target, s/he normally reaps halfway. There is always a gap between one¡¦s ambition and achievement, or between the reality and the goal a law is set to arrive at in the society. Every culture or country has her own attributes, which eventually explain for her good, bad or specific outcome deriving from a specific input, e.g. a new president or a new patent act or reform.
A person or a country feeling or eagerly seeking to have a promising future is normally active in pursuing behavior, action mode or law changes or amendments in order to exploit or to try to ripen the promising future. In recent decades, in respect of the patent sector, the US and South Korea are the suitable applications in this respect by diligently amending their Patent Laws. It is unclear whether just like a society normally welcoming new and wonderful songs, the society needs new law amendments for keeping busy the law practitioners and/or keeping combating irregularities resulting from or naturally derivable from practices of the preexisting laws in order to beautify or make wonderful the world.
It appears every one or country desires to create miracles since a record breaker normally can enjoy more than one second how great the involved entity is. Nevertheless, it seems that there are not so many miracles that could be forced to happen, or the miracle will no more be a miracle if there are so many miracles. We have mentioned in the past that Taiwan is a place of miracles of, either good attributes or derogatory images. As a result of our dream in coining miracles, we have reaped a 8-year economic stagnation and might have realized that step-by-step improvements in each sector are the best recourses to arrive at a specific goal.
Although compared to others, Taiwan might not effect patent-related law revisions frequently, our Intellectual Property Office (IPO) did exercise various improving measures much more than in the past. As a result, we might feel or find the practices before IPO become more reasonable. Although a plan is always left behind the changes having been resulting from the natural social transition, we still need to make some plans for the future on the one hand while on the other hand, facing by taking ease what is confronting us in order to place our easy steps forward.
Examining an application on a claim by claim basis
Perhaps, due to our agrarian nature in our inherent culture, our IPO examines a patent application on a claim by claim basis only until July 1, 2004 even though it has been an international practice to do so some decades ago. It might be a kind of our own miracle that our IPO could exercise patent examination by taking all the respective claims of a specific patent application as a whole to determine whether or not the specific patent application is patentable without resort to try to identify whether there is a patentable dependent claim. One might get interested in getting known to the situation how we or the applicants could survive all that while. As is known, it costs at least two office actions before a patent application is forced to the appeal stage. We have been well-trained or alert enough to either amend the claims and/or submit substantiating documents to demonstrate how and why the application in issue is patentable by carefully monitoring the prosecution in an effort not to trap the application in the appeal stage since even until now, a patent application will be eventually be held unpatentable without the possibility of being rescued even if the examiner has held that the patent application contains allowable subject matter although its independent claim(s) are unpatentable, if the patent application has been caused to be in the appeal stage. It is funny and cruel but is the reality here in Taiwan until now.
To secure the patentable subject matter in the dependent claims or some of independent claims, one should follow the Examiner¡¦s instructions to get allowed what are considered to be patentable by the examiner in the parent application and pursue the intended larger or broader scope in the divisional application(s). If a divisional application is filed, it will assume the prosecution stage of the parent application, which means that if the parent application is in the reexamination stage, the newly filed divisional application will be regarded as having a prosecution stage under reexamination too. Specifically, as above described, there are two office actions before the appeal stage comes. Nevertheless, each of these two office actions normally comes after an official pre-action notification. Accordingly, there normally are three official communications before an applicant gets a final action, which normally means or mirrors the prosecution stage of the newly filed divisional application. From this viewpoint, it would appear to be considerable to file the potential divisional application at an earlier stage if an ultimate divisional application is hardly avoidable.
Since January 1, 2007, it becomes compulsory for our IPO to issue the first official communication accompanying therewith a ¡¥patent application search report¡¦ regardless whether it is a communication or action rejecting or allowing the patent application. It appears again we reaped another miracle that without a search report, a patent application could be duly examined. As a matter of fact, such miracle is not that great since our IPO¡¦s examination for a patent application has considered the prior art since some two decades ago although there is not a formal document called the search report. That means that before that some two decades ago, our such miracle is really ¡¥great¡¦ since the patent examination could be conducted without considering or citing a prior art. We will not explain here why this is great since it seems that one skilled in the art will readily know it never will be.
Divisional practices in Taiwan are primarily governed by Articles 32(2) and 33(1) of the Patent Law respectively stipulating that ¡§Two or more inventions belonging to a single general inventive concept may be filed for application in an application¡¨ and ¡§Whenever an invention patent application substantially includes two or more inventions, divisional applications may be filed therefor subject to notification from the patent-dedicated office or petition of the applicant.¡¨ Some clients, especially in the fields where the ultimate configuration is developing, might need to file or preserve the rights of filing divisional applications in order to preserve all potential rights derivable from the original disclosure. It was once heard that the EPO building was built by collecting fees through requiring divisional applications. It would first appear that the authority normally would like to require or takes a lenient mind to allow divisional applications since it could increase the government revenue. Nevertheless, as is known, effective from November 1, 2007, the USPTO restricts the family number of each patent application to be 3 unless there is a restriction requirement. It appears that every entity including animal, plant or public or private organization would like to expand or reproduce if the environment so affords. From this point of view, it is hardly known why the USPTO did not solve the divisional backlog by recruiting some new examiners. Is it because the USPTO determined that lenient divisional practices would not help healthy thereof?
From Article 32(2), the law sets out the conditions for subject matters to be put in a single patent application. Interpreted otherwise, this provision might be regarded as encouraging the divisional applications to be filed. It, however, might be controversial whether Article 33(1) can be based to argue against IPO that a divisional must be allowed. As can readily be figured out, the core issue shall reside in the interpretation or definition of ¡¥two or more inventions¡¦ where a divisional application is hardly allowable if an ¡¥invention¡¦ is construed as a single inventive concept while readily allowable if ¡¥inventions¡¦ are extended or stretched to include dependent claims. Specifically, due to the innate nature of unity of invention, a patent application normally relates to a single inventive concept. Guided by or following this thoughts, we might help the USPTO to find out bases for supporting its new practices. Nevertheless, if we agree that two dependent claims in the same patent are actually two inventions, it would be hard for us to persuade ourselves to happily accept the new US patent practices since except capable of collecting more fees from the applicants, we could not easily find out what on earth the lenient divisional practices will do harm to the Patent Office. Without statistics about how a patent troll or the like could make use of the lenient divisional practices to exploit the patent system for unfairly collecting royalties or claiming damages from potential competitors, it is hard for us to comment further on merits or demerits of the new US divisional practices.
Unlike most divisional practices in majors patent authorities, Article 33(2) of Taiwan Patent Law stipulates that ¡§Divisional applications in the preceding paragraph shall be effectuated before receipt of a reexamination action of the original application, and shall take the filing date of the original application as their filing date if so accepted, provided the priority is claimable if appropriate and their examination shall continue from the completed procedure for the original application,¡¨ by which it means that divisional applications can only be filed before receipt of a final action either rejecting or allowing the parent application. Specifically, the US or EP patent office allows a divisional application to be filed before paying the issue fee after receiving the notice of allowance while the Mainland China IPO so allows before expiry of two months from mailing the allowing action. Perhaps, our IPO sticks to such practices by self-consoling that every country has her own peculiar nature. Sarcastically, there are skills developed in order to confront with or nullify such strict practices, e.g. by making necessitated an official letter before receiving an allowing action or by filing in advance a divisional before the possibility that the directly or indirectly parent application would be finally rejected.
Although we had successfully convinced our IPO that two dependent claims are qualified as two inventions or patents around two years ago, it appears that our IPO might like to take otherwise recently in this respect. It is unclear whether this position has anything to do with the new US divisional practices. It is also unclear whether we will succeed again to convince our IPO that two dependent claims in a patent are two inventions if our IPO is really prepared to take otherwise. It is still our belief that it is unnecessary to restrict the filing of divisional applications since:
1. In theory, the applicant cannot reap additional protection beyond the original disclosure since every divisional application must find bases from the original disclosure from the largest extent of which the applicant is originally entitled to claim as broad as possible;
2. The fondness of divisional applications from the applicants might be frustrated by taking a strict measure in taking whether there is a new matter in the divisional application from the original disclosure;
3. It might be possible that some applicants desire to take advantages of divisional practices to achieve full or excessive enforcements of patent rights. Nevertheless, interests of the accused could be secured by self-acquainting the disguised conspiracy or carefully inspecting the interrelationship of the involved patents unless there are enough proofs and evidences to demonstrate that the accused is normally weak enough to so self-protect; and
4. The official fees including the ensuing annuities might also serve as some deterring roles in such divisional practices.
Certainly, we are willing to change our position if any patent authority shows it to be vividly clear that the authority runs across what kinds of dilemma and/or difficulties, e.g. it turns out to be very troublesome and controversial to curb the applicant from trying to argue that the divisional application does not claim beyond the original disclosure, by adopting lenient divisional practices.
We would like to further corroborate our some sort of stubborn position regarding divisional practices through the illustration of the European patent (EP) practices. If there is a client who intends to file an EP application for an invention of a technical field under development and believes there are many sub-inventions derivable from the invention disclosure that are configurable therefrom, the client could circumvent the EP practices that the claim scope shall not be broadened after filing by filing a patent application with a very broad independent claim, e.g. just claiming the prior art, by which any later claim amendments or divisional applications must have scopes narrower than that of the original patent application. If what is insisted could be somehow circumvented, what is the purpose or worthiness for an entity to insist in taking a specific position?
Animal or plant varieties and biological materials
Article 24(1) of the current Taiwan Patent Law provides that ¡§what are ineligible for an invention patent include as follows: 1. Animal or plant variety and essentially biological method for producing animal or plant, provided this limitation shall not apply to a microbiologically producing method.¡¨ In the proposed amended Patent Law, this provision is to be deleted since our country decides to hold an open mind toward the patentability of the animal or plant variety. Further, the reason for lifting the unpatentable inclusion of essentially biological method for producing animal or plant originates from the belief that the reproducibility of the animal or plant by a biological method is too low to qualify for patentability.
In order to better adapt to this law amendment:
1. Article 57(1)(1) currently providing ¡§effect of an invention patent right shall not extend to any of the following various circumstances: 1. Where the invention is practiced for research, education or experimental purpose without a profit-making behavior¡¨ not only is proposed to be amended into ¡§1. An necessitated action for practicing the invention for research or experimental purpose,¡¨ but also is proposed to be preceded by a new item that ¡§1. A private action of non-commercial purpose¡¨ in order to respectively make it clear that an education purpose or non-profit-making action is no more an excuse for exemption from the patent infringement and that a private action is exempted from patent infringement as long as it is of non-commercial purpose;
2. There might be a new Article 57bis providing:
¡§After the biological material manufactured by or manufactured through consent by the invention patentee is sold, the effect of the invention patent rights shall not extend to a directly acquired biological material through propagation from the biological material, provided the directly acquired biological material shall not be further put into use for propagation purpose.
The biological material after sale in the preceding paragraph shall have a use thereof resulting into the biological material propagation.¡¨
This article is to balance the exhaustion theory and the protection to the biological material and follows the justice as embodied, e.g. by UPOV (The International Union for the Protection of New Varieties of Plants)
3. There might be another new Article 57ter providing:
¡§After the patented plant propagating material manufactured by or manufactured through consent by the invention patentee is sold, the effect of the invention patent rights shall not extend to the use of the harvest product by a farmer for propagating purposes.
The so called plant in the preceding paragraph is limited to a plant variety as announced under Article 26 of the Plant Variety and Seedling Act.¡¨
It is also clear that this new provision is to reflect the spirit of Article 15(2) of UPOV providing ¡§Notwithstanding Article 14, each Contracting Party may, within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder, restrict the breeder¡¦s right in relation to any variety in order to permit farmers to use for propagating purposes, on their own holdings, the product of the harvest which they have obtained by planting, on their own holdings, the protected variety or a variety covered by Article 14(5)(a)(i) or (ii).¡¨
4. There might be new Articles 78(7) and 78(8) providing:
¡§Where a variety right can be utilized only by practicing other¡¦s patent rights of a biological technique, the variety right owner and the patentee may negotiate to practice through cross-license, and the variety right owner may petition a compulsory license under Article 76 if there is no positive yield from the negotiation provided that the petition for the compulsory license shall be made when compared to the patent, the variety shall have a major technical improvement of an economic significance.
The compulsory license obtained by the variety rights owner shall be transferred, inherited, licensed, or pledged with the variety rights.¡¨
It would seem that these two paragraphs are added to reflect the spirits of Articles 78(5) and 78(6) when the biological material is involved in since they are comparable.
In the proposed law amendment, a partial design application is to be allowed. Until now, the design drawings must be in solid line in standard 6-side views and perspective view. Further, a design must be in itself an operable or workable article. Accordingly, a partial feature which could be embodied in a vast of articles must be filed in multiple design applications respectively directed to all articles, which appears to be inhumane. The applications in respect of computer icons or GUI (graphic user interface) are also proposed to be allowed although there were a few having been granted, perhaps, due to the inadvertence of the examiner. In addition, a set of articles, e.g. a table and its matching stools are proposed to be allowed to be filed in the same design application although they cannot be separately protectable, in contrast to the current situation that the table and each of its matching stools should be separately filed. Although the proposed amendment in this respect appears to be lenient, it might be still insufficient or regrettable that they are only collectively protectable since the protection for the article set needs not necessarily become better by such amendment.
The most significant proposal for amending the design law might be trying to enlarge the protecting scope of a design patent. Specifically, the protecting scope of a design patent used to be regarded as minor or small when compared to that of a patent or utility model. In other words, a modification to the shape of a design to a certain extent might escape from the protecting scope of the design since the decisive factor for a design infringement is whether the ornamental or visual effect of an accused design remains the same with that of the design patent, which, however, is not easily decidable when compared to the determination of the technical solution of a patent or a utility model. That is, in the proposed amended law, the protecting scope of a design will be imparted with one being broader than that conferred in the past. Nevertheless, it is still on the horns of a dilemma for the involved issues here, i.e. to what extent the protecting scope should be broadened and how to decide the accused design has fallen into the purview of the broadened protecting scope for a design patent?
Two or more patents for an invention
There is a proposed new Article 31bis providing that:
¡§Where the same person files at the same day an invention patent application and a utility model application for the same invention or creation and so states upon filing, the patent dedicated office shall, if a utility model patent right has been obtained therefor before issuing an invention patent allowing action, demand a reply from the applicant in a prescribed period and refuse the patent granting if failing to reply in the prescribed period or replying not to abandon the utility model patent right.
The utility model patent right shall distinguish from the date the invention patent is issued if an invention patent is chosen by replying under the preceding paragraph.
An invention patent shall not be granted if the utility model patent right has been certainly distinguished or irrevocably cancelled.¡¨
This proposed law is enacted to resume the protection from a utility model patent right by taking advantage of the later granted invention patent or advance the protection for an invention patent right by taking advantage of the quicker protection of the utility model system. The above proposal, however, deserves the following comments:
1. It appears unnecessary to require the express statement upon filing that the applicant has simultaneously filed both an invention patent and a utility model patent since the convenience of the patent office should not be reaped at the sacrifice of an inappropriate burden on the applicant as the express statement seems to be since it is the fault of the patent office if unable to locate there is another simultaneous filing from its search system;
2. It seems improper to refuse the applicant from getting an invention patent simply because there is no reply from the applicant of its preference to the invention patent or the utility model patent since the applicant can get nothing by double patenting its invention or creation on the one hand while on the other hand, it will do no harm for the patent office to grant the invention patent at the price of repealing the utility model patent;
3. As to the proposed third paragraph, it might be necessary to define at what circumstances the utility model patent right is distinguished or cancelled;
4. It appears that the German auxiliary utility model system is not bad a system to be adopted if two more patents for an invention are believed necessary for some applicants.
Compulsory license for pharmaceuticals
According to Declaration on the TRIPs Agreement and Public Health passed on November 14, 2001 by WTO Doha Ministerial Conference and Implementation of Paragrapn 6 of the Doha Declaration on the TRIPs Agreement and Public Heath resolved on August 30, 2003 by the WTO General Council, there are proposed two new articles 76bis and 76ter for helping ourselves and other developing or underdeveloped countries in respect of potential disasters resulting from AIDS, tuberculosis, malaria and other infectious diseases. The enactment reflects the following major points:
1. The WTO General Council resolution did not restrict the applicable scope of the pharmaceuticals certainly including therein active components and diagnosing agents which are used for treating AIDS, tuberculosis, malaria and other infectious diseases, the scope of which might need further determination.
2. According to WTO General Council Resolution 1(b), qualified importing countries are referred to underdeveloped countries or ones having notified TRIPs Council to become import-willing countries according to General Council Resolution 2(a) unless a non-WTO member country is involved in.
3. The applicant should submit evidencing documents showing that there are no patent rights in the importing country in respect of the desired pharmaceuticals or that a compulsory license to the patent in issue has been granted or is to be granted. In the latter case, there might be an unsuccessful exhaustive negotiation with the patentee in a reasonable period under a reasonable commercial condition.
4. A compulsory license in the exporting country should satisfy the following three conditions (1) the pharmaceuticals under the compulsory license should have a quantity meeting the need of the qualified importing country and entirely exported to the importing country; (2) the pharmaceuticals should clearly showing manufactured under the Resolution and bear significant distinction in color or shape from those made by the patentee or its licensee; and (3) the compulsory licensee should announce in its website the quantity, title, destination and distinguishable feature of the exported pharmaceuticals.
5. The compensation should be decided by evaluating the economic values of the patent rights in the importing country, e.g. by referring to her UN human resources index.
6. Pharmaceuticals to be exported shall be inspected according to Article 39(1) of Pharmaceutical Affairs Law in order to protect the end users and can apply the petition materials of the generic drug for inspection without the restriction of Article 40(2)(2) of Pharmaceutical Affairs Law.
7. If there is an impending danger or emergent case, Taiwan could act as an importing country. Under such circumstance, an importing country should adopt reasonable measures to prevent the imported pharmaceuticals from being transferred into being exported.
Proposed Remedial Reforms
Currently, an administrative patent or trademark dispute, e.g. invalidating or canceling a patent or a trademark registration will go through 4 instances, i.e. reviewing the matter by IPO, appealing before Board of Appeals (BOP) in the Ministry of Economic Affairs (MOEA), appealing before the Higher Administrative Court (HAC) and finally appealing before the Supreme Administrative Court (SAC). Under the proposed reform, there will be 3 instances instead, examined by a collegiate panel organized by at least three senior examiners in IPO, appealing before the to-be-newly-established IP Court (IPC, to be described later in details) trying the matter in respect of the factual and legal issues, instead of HAC and finally appealing before SAC trying the matter only in respect of the legal issues. Since Taiwan is currently very busy in political contests of the presidential election in 2008 and/or political debates in respect of joining in or returning the United Nations, a regular progress or a normal operation of the regular or reformative systems is unnecessarily automatically available so that not only how far HAC is still responsible for IP matters or IPC will start responsible for IP matters, but also there are voices to have an improved 3-instance system, before the new 3-instance system is formally running, where the first instance will be with the BOP in MOEA, the second instance with the HAC and the third instance with SAC. Since to foresee a future event in a politically busy society is uneasy, we could not correctly and would not like to tell here whether the improved 3-instance system will be put into practice or how soon the new 3-instance system will function as anticipated.
In the trial for the disputed case by the collegiate panel, an oral trial is to be followed in order to have a concentrated trial, to fully present the issues involved in and to discreetly safeguard interests of the party so that no one will worry whether the procedural protection is insufficient as a result of the instance reduction. Such considerations might be correct while there should still be the following potential considerations:
1. The reason why the trial can be concentrated might partly attribute to the fact that in this busy but prosperous society, not only we require the judicial authority to be efficient but also we hate to waste too much judicial resources on a single dispute. As a result, rather than otherwise, the times and the time a case is to be put in trial are accordingly limited;
2. It is true that issues tend to be revealed through oral debates. Subtle or latent key points, however, might still be not readily apparent although this could be attributed to the fault of a party or its attorney;
3. If intrinsic issues resulting from the above two considerations could not be utterly suppressed or resolved, it might be hard for us to claim that a discreet safeguard to interests of a party has been reached.
The decision rendered by IPO on a patent or trademark application is an administrative action based on which a relevant party can have locus standi to act against any third party so that the decision is deeply involved in the public interests. Nevertheless, till now, the opponent in any application in the administrative dispute is always the IPO so that the party having the real direct substantial interests is not an obligatory party for joining into the remedial proceedings, which is considered not only time-consuming but also having confused the roles of referee and rightful party. In the new 3-instance system, the IPO will no more be a party to the disputed IP case excluding a case where a party seeks patented or registered an IP right since the IPO must be a party in such case.
Issues or disputes regarding compulsory license
European Community Executive Commission informed Taiwan on March 1, 2007 of having entertained the accusation submitted by Netherlandish Philips for the IPO granted compulsory license regarding its CD-R patent through violation of relevant provisions in Article 31 of TRIPs so that its interests derivable from its patent rights have been damaged and it is either disadvantageous to the related trade or risking the rights of European merchants collecting royalties from Taiwan and other countries. Specifically, according to Philips:
1. The stipulation ¡¥the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time¡¦ as provided in Article 31(b) of TRIPs is a purely procedural provision so that Taiwan IPO (TIPO) is defective and imprudent to merely take the cost structure into substantive consideration for the ¡¥reasonable commercial terms and conditions¡¦;
2. TIPO having not mentioned the purpose of granting the compulsory license and not effectively restricted the scope and duration of the compulsory license pursuant to the purpose has violated the provision of Article 31(c) of TRIPs stipulating that ¡¥the scope and duration of such use shall be limited to the purpose for which it was authorized, and in the case of semi-conductor technology shall only be for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive¡¦;
3. TIPO, while granting the compulsory license, having known that the products produced by utilizing the patent by Gigastorage Corp. are to be exported has violated Article 31(f) of TRIPs stipulating that ¡¥any such use shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use.¡¦
According to TIPO:
1. There is no international practice or authoritative precedent or interpretation that 31(b) of TRIPs merely relates to a procedural provision so that ¡¥reasonable commercial terms and conditions¡¦ should be decided on a case by case basis;
2. While reviewing the present compulsory license, both parties focused their disputes on a quantifying criterion based on the amount of the royalty. Since there is an unsuccessful licensing negotiation, while deciding the case, in addition to the cost structure, there should have been reasonable commercial terms and conditions if, from the objective viewpoints of a third party and the entire industrial development, the proposed commercial terms and conditions do not violate the relevant technical market situations, facilitate the industrial developments and creative a win-win environment;
3. Upon reviewing the present compulsory license, TIPO has repetitively allowed opportunities for negotiations upon requests from either party in order to follow the market mechanism so that a compulsory might be reasonable if reasonable commercial terms and conditions for arriving at a negotiated license ensue thereby;
4. In its decision, the compulsory license have identified scope and duration and made it clear for primarily supplying the domestic market so that its reviewing attitude complies with the international norm.
Philips has appealed the compulsory license review by the IPO and the case is pending before the Higher Administrative Court now. In addition, Philips has petitioned on May 5, 2006 with the IPO to revoke the compulsory license it granted earlier and the IPO had initially revisited its earlier review on February 8, 2007. A giant company could always enjoy some privilege or special treatments from the respective governments. For example, in the European Community (EC) officials, urged by the Philips, visited Taiwan in May, 2007 under Trade Barriers Regulation for physical investigation relevant procedures and provision contents and paid thanks to the friendly attitude of Taiwan. In addition, Taiwan IPO had revoked on May 31, 2007 revoked the compulsory license action made on July 26, 2004 upon requests from both parties. Specifically, Philips petitioned that it has new licensing program (Veeza) and Gigastorage did not comply with the requirement of ¡§primarily supplying the domestic market¡¨ while Gigastorage petitioned that it would cease to locally produce CD-R products from May 31, 2007.
This event is interrelated to the law amendment to Article 76 whose Paragraph 2 stipulates that ¡§Whenever a patentee has a restrictive competition or unfair competition act for which there is an irrevocable decision from the court or the Fair Trade Committee under the Executive Yuan, the patent-dedicated office may grant to the petitioner a compulsory license to practice the patent upon petition notwithstanding no circumstance in the preceding paragraph exists.¡¨ On November 15, 2006, there were 64 legislators considering the patent abuse could not be efficiently remedied if a compulsory license could only be petitioned until there is an irrevocable decision from the court or the Fair Trade Committee under the Executive Yuan against a restrictive competition or unfair competition act from a patentee so that they propose to delete the word ¡¥irrevocable¡¦ for the relevant decision. As a result from the first sentence of Article 31(k) of TRIPs that ¡¥members are not obliged to apply the conditions set forth in subparagraph (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive,¡¦ they further propose that the limitation for ¡¥the supply of the domestic market¡¦ shall be lifted off.
As to the historically first compulsory license case, the IPO added that it originated from the changing marketing environment where the petitioner considers that the price for a CD has been significantly decreased so that it is never reasonable for Philips to collect a royalty of 6 cents per CD, which is equal to 40% of the selling price and it cannot but petition the compulsory license after fruitless negotiations of more than one year. While deliberately reviewing the petition in order to meet with the statutory requirements and not to violate the obligations under TRIPs, the IPO declared having tried its best to summon enough many meetings attended by industrial and academic representatives and both parties in investigating and interrogating the case in order to eventually render its decision. The same attitude will be applied to the repealing case.
As a matter of fact, due to some identified reasons, Gigastorage had petitioned to voluntarily withdraw the compulsory license in April 2007. As is known, this compulsory license is the first case not only in Taiwan but in the world. Still more, the European Community (EC) might worry that if such precedent is to be adopted by Mainland China or India, the global IP protective mechanism might be ruined. It was thus said EC tends to construct that the compulsory license decision made by IPO violates what TRIPs provides and Taiwan shall amend her Patent Law, and will submit before WTO for dispute resolution. In response to this hearsay, a high official in MOEA indicated that bilateral negotiations with EC will be initiated after receiving its report for investigating potential amendments to the Patent Law without bothering the dispute resolution procedure before WTO. The Deputy Commissioner, Ms. Wang, of TIPO, however, asserts that there is no violation of Taiwan Patent Law by rendering the compulsory license for Gigastorage.
It was reported that Philips believes the compulsory license reviewing mechanism Taiwan has now violated what TRIPs provides since the licensing agreement is a commercial activity and is not a matter in which the governmental power should intervene in order not to interfere with the interests of other European merchants. In response to this position, it is to the belief of the former Commissioner, Mr. Tsai, of TIPO that the compulsory license is fair and justified so that if there is any international pressure or blame against such compulsory license, it must be attributable to the stance we have on the international platform. As to the dispute between Philips and Gigastorage, they had settled the worldwide CD-R patent royalties in October, 2007.
After the first compulsory license, TIPO gave a second compulsory license to Roche¡¦s Tamiflu for fight against the bird flu. This compulsory license does not arouse much noise since it relates to the human morality or lives and is dedicated to satisfy the domestic demand. A legal head of a foreign company took that granting the first compulsory license is just like an action bandits will do. It was reported due to the illegal nature, TIPO dared not to grant the compulsory license petition from Princo Corporation even there is an identical situation with what Gigastorage made its petition.
The trade barrier investigation conducted and completed by the European Community in January 2008 indicates that the compulsory stipulations of Taiwan Patent Law act against the obligations under TRIPs of WTO and suggests to resort to the WTO dispute resolution mechanism if Taiwan does not take concrete steps, including amending the Patent Law, within two months to solve the matter.
We would like to comment as follows:
1. According to Article 31(k) of TRIPs that ¡¥members are not obliged to apply the conditions set forth in subparagraph (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive,¡¦ there might leave a controversial room for argument that a compulsory license can or cannot be used for solving the a phenomenon, e.g. being anti-competitive, against which the applicable laws are stipulated to fight, if the petitioner has stuck to the above-identified TRIPs by first following the judicial or administrative process;
2. It might be baseless for our legislators to further propose that the limitation for ¡¥the supply of the domestic market¡¦ shall be lifted off in view of the nature of the compulsory license;
3. To collect 40% of the selling price as the licensing royalties so as to make the licensee profitless appears unjust and unfair and should be remediable by laws, by which it never means that the sole recourse to which we could have is limited to the compulsory license provisions;
4. With repetitive negotiations being fruitless, it is still not enough to justify the compulsory license provision, by which it never means that there is no remedial measure, or in addition thereto, to rescue what a petitioner is suffering.
Technical Assessment Report for Utility Model Patent
Effective from July 1, 2004, a utility model application will subject to only a formality examination without dealing with the substantive aspect before issued. If any one is interested in knowing how the patentable requirements have been met so as to know how to enforce the rights or to make use of the technical scheme disclosed therein, a petition to have a technical report on the utility model could be made. Effective from January 1, 2007, if the technical report would include an unfavorable novelty or inventive assessment, there is a mechanism through which the patentee could explain or express its opinions no matter who the petitioner of the technical report is. This procedure shall apply no matter which time the technical report is requested to be rendered, including the opportunities where the cited references are changed or the comparison bases have been changed into the approved revised claims. Before the technical report is issued, the examiner should judge whether explanations or expressions from the patentee will change or influence what is to be included in the technical report.
In the notification embodying the mechanism, the IPO shall itemize which claims are taken not novel or inventive and indicate which paragraphs, contents or drawings in which cited reference. If the patentee would like to explain or express its opinions, they must be submitted with the IPO in 30 days, which is inextensible.
It is also proposed that whether supplement or amendment upon examination goes beyond the original disclosure shall be reviewed in the technical report and IPO may ex officio cancel the patent rights when the technical report has some specific comparison results.
Proposed Amendments to the Patent Law
There are also some proposals in amending the current patent law, including allowing the simultaneous filing of an invention patent and a utility model patent for the same subject matter (by solving the competing rights thereafter), proportionally increasing the surcharge fee amount with the period beyond the original expiration, allowing the revival of the patent right under certain circumstances of due or competent causes not belonging to the force majeure, considering to limit in which kind of foreign language, the specification text could be the base for priority claim, causing the examination fee to be dependent on the claim items, ¡Ketc., all of which are assumed to be finalized by the end of the year 2007 for sending to be reviewed in the Legislation Yuan. In addition to those formal law amending proposals, there are some administrative reformations the IPO have adopted.
E-mail or Fax submissions with the IPO
The following petitions can be made through email or facsimile, correcting the ID, changing the representative or address of a patentee or the address of the document receiver or the agent, supplementally issuing a receipt certificate, reviewing the file, copying, petitioning the extension correction, petitioning interview or inspection, and returning the sample for the patent matter, and revoking an agent, extending the time for correction, changing the address of the patentee, the document receiver or the agent, supplementarily issuing a receipt certificate, reviewing the file, copying, petitioning for correction, petitioning a hearing and returning an exhibit for the trademark matter where the change of the address for the document receiver could only be made per case rather than general for all cases as in the case for changing the address for the agent.
Examination Guidelines for Famous Trademark
Article 23(1)(12) of the Trademark Law provides ¡§No registration may be made for a trademark having any of the following cases: ¡K12. Identical or similar to another person¡¦s famous trademark or mark, thus likely causing the relevant public to confuse or mistake or abating distinctiveness or reputation of famous trademark or mark provided that this shall not apply subject to consent from trademark or mark owner to apply for registration.¡¨ How to appropriately protect the famous trademark has been a hot topic for many years, through which quite many a criteria for judgment or protection have been developed. We would like to briefly summarize what were discussed during the public hearing for the examination guidelines for the famous trademark as follows.
It has been well-taken that ¡¥likely causing the public to confuse or mistake¡¦ and ¡¥likely abating distinctiveness or reputation¡¦ of famous trademark or mark are two different categories for protection of a famous trademark. In order to simplify the matter, we will respectively call them the Former and the Latter types. The demarcating line for telling apart the Former and the Latter, according to TIPO, is irrelevant to whether the goods/services involved in are competing since the protection for the Former has been extended from the protection for confusion or mistake about the source or origin of the goods/services to that about sponsorship, subsidiary relationship or association so that the Former still covers where involved goods/services are not competing and have a lesser similarity so that it is safe for us to recognize that the concept of the former has been extended to be overlapping with that of trademark dilution.
Some judges consider that the above provision does not make it clear that the Former is applicable only when involved goods/services are similar or the Latter is applicable only when the involved fame is known to the ¡¥general¡¦ public so that the Guidelines could only use the comparative language. Specifically, judges here tend to take that Guidelines could only express that the Former requires a trademark having a lesser fame than the Latter does while the Latter, unlike the Former that should take whether there are similar goods/services into consideration, could outright ignore whether there are similar goods/services involved in. TIPO adds that the trademark dilution is a special protection in addition to the protection for the likely confusion or mistake so that it requires protection only when the fame of a trademark conferred for protection beyond the competing goods/services reaches the extent generally known to ¡¥the general public.¡¦ Specifically, the Latter is used to protect what really deserves to be additionally protected for which the Former cannot protect.
Accordingly, according to TIPO, it is preferable to separate the applications of the Former and the Latter in order to resolve the grey area for eradicating the queries whether the Former is only applicable to a situation where there are similar goods/services and whether the Latter is merely applicable to a situation where there are dissimilar goods/services. Sticking to such view in the Trademark Examination Guidelines by TIPO, however, is questioned by the judge to surpass what the Trademark Law could be construed. According to Judge Kuo-Cheng Chen, if the cited trademark is of a medium fame and the involved goods/services in the involved two marks are not similar, neither the Former nor the Latter is applicable. The new Commissioner, Ms. Mei-Hua Wang declared that:
1. Since the Former and Article 23(1)(13) both judge whether there is likely confusion or mistake, it would be of enough strangeness if the Former is applicable to non-competing or lesser similar goods/services while Article 23(1)(13) is applicable only to similar goods/services;
2. It should clearly be not the case that all registrations shall be cancelled as long as the opposer submits a cited registration of a medium fame.
According to IPO, whether it is similar between trademarks or goods/services is a relative concept rather than an absolute concept, and is exercised to eventually judge whether there is confusion or mistake between two trademarks in the market. Specifically, other factors, e.g. bad or good faith or whether there is a diversified management, are to and should be taken into consideration. Further, the IPO asserts that the judgment standard for the Former is the ¡¥relevant public¡¦ whereas that for the Latter is the ¡¥general public.¡¦ The TIPO further adds in the Guidelines:
1. A trademark is normally recognized as famous when it is so extensively put into use as to be well-known to the consumer.
2. Nevertheless, even a trademark has not been used or extensively put into use in this country, the trademark will be recognized as famous if the evidence shows that the fame established through extensive uses abroad has arrived at this country.
3. Whether the fame has arrived at this country could take whether the territorial region of the trademark use has a close relationship with this country into consideration while whether there is the close relationship should be synthetically judged from how is the trading relationship, whether there is a frequently reciprocal traveling, whether there is a similar culture or language and so on.
4. In addition, whether the trademark or its goods have been extensively reported in local newspaper and/or magazines or the trademark has been extensively or frequently discussed in the Chinese networks is certainly a factor in deciding the fame of the trademark. It is for example convincing to submit data relating to the world top 100 ranking survey made by a local or international credible newspaper or magazine, the top 10 valuable brands in Taiwan, the consumer satisfaction survey of various trademark goods, Chinese network discussions or appreciation by network browsers.
5. Relevant registrations are corroborative in establishing the fame in addition to evidence as to how the trademark is put in practical use.
Amendment to Specification of a Utility Model Application
TIPO has officially announced on August 13, 2007 that since a utility model application is only subject to formal examination since July 1, 2004, there will be no examination as to whether amendments or supplements made into the specification and/or drawings of a utility model, which is assumed to be made within two months of the filing date thereof, go beyond the original disclosure. That is to say, whether there is a new matter in the amendments or supplements will be decided only when there is an opportunity to make a substantive examination on the utility model in issue.
Comparisons between Technical Report for Utility Model and Substantive Examination for Invention Patent
1. A technical report for a utility model can only be petitioned when published unless it has been certain that the utility model has been in a state for publication or being granted, e.g. the applicant has paid the issue fee and the first annuity.
2. A technical report (the former) shall be completed relatively sooner than a substantive examination (the latter) is provided that the former shall be completed in 6 months if there is shown that there is a non-patentee commercially practicing the utility model. Compared to this, Article 39 of the Patent Law provides that ¡§if an invention patent application is commercially practiced by a non-patent applicant after earlier publication, the patent-dedicated office may preferentially examine it upon petition.¡¨ Nevertheless, how soon the preferential examination could be completed is not statutory. According to the inside regulation of IPO, the former must be made in 6 months.
3. The former is not an office action but a reference for the utility model patentee upon enforcement so that there exists no remedial measure even if the applicant dissatisfies with the former.
4. The former needs compare every claim and cite therefor references, regardless of patentability, by indicating which portion(s) of the references are based on.
5. An action for the latter is made only once whereas the former could be rendered through a respective petition although the Patent Office will not automatically change contents of the former it made. Any interested party nevertheless could make another petition to acquire a new Technical Report (TR) by paying the prescribed fees. Upon preparing the second TR, it is possible that the two sequential TRs might have different comparing results due to different searching time points through revealing newly published patent(s) or application(s), locating new patent(s) or published application(s) or having an amended specification. In this case, only newly cited patent(s) or application(s) and/or the newly claim(s) having been irrevocably amended will be put into new comparisons. There will be no different results between TRs otherwise. Once the former is completed, any third party can petition to obtain a copy thereof.
6. The former will not decide whether a utility model patent has an industrial applicability whereas an invention will subject to be rejected if having no industrial applicability.
7. An invention having no unity will be rejected whereas the former touches no unity issue.
8. For effecting the latter for an invention patent application, the unpublished application(s) should be searched. If the unpublished application(s) can defeat the novelty of the invention patent application, the latter shall be made only after the unpublished application(s) have been published. In as much as the former should be rapidly completed, it is improper for it to be made through waiting the publication of the unpublished application(s) even if it is possible to so locate upon completing the former.
9. For rejecting a patent application by the latter, the applicant will receive in advance an opinion letter from the IPO and the examiner could conduct an interview through the petitioning of the applicant. Although upon preparing the former showing an unpatentable requirement, the applicant will be notified to submit a statement to that effect, there is no interview, either ex officio or upon request.
According to IPO, there are voices advocating fee amendments due to the adoption of the examination made claim by claim and the principle of user charge. Specifically, the issues include how the number of claims could be determined, how to determine the fee for each claim, whether multi-dependency depending multi-dependency is allowable and how to decide its fee, will there be a refund if there is a later reduced claim item, are the fees for the independent claim and dependent claim the same, whether such fee amendment includes a price v. quantity review, whether there will be a reduced fee if the applicant submits a foreign-made search report, whether the fee for reexamination is reasonable in view of the new fee amendment, whether the substantive examination fee for the earlier application being the subject for an inner priority claim is refundable, whether the substantive examination fee and the filing fee of a withdrawn application can be refunded, whether the fee after deducted for a fixed amount is refundable in order to be fair for an application having paid a large sum if the fee is determined to be partly refundable, what kinds of uses are planned for the collected fees in addition to being sent to the national treasury, and whether the design patent has a higher annuity? All of the above issues will be resolved in due time by IPO.
Search Report v. Examination Opinion Letter
Before an office action is formally issued, IPO always issues an examination opinion letter setting forth therein what are prepared to be made in the office action to invite the applicant submitting potential convincing arguments for obviating the unnecessary rejections and/or objections therein. Such measures are kindhearted. Accordingly, there are the following options in theory to define the relationship between the search report and the examination opinion letter:
1. Using the search report to serve as a simplified examination opinion letter on novelty/inventive step.
2. An additional search report to the regular examination opinion letter or office action is unnecessary.
3. A search report is issued before the substantive examination is made.
4. Using the search report to serve as a reference for substantive examination.
The IPO will eventually decide on the above in due time.
Patent Attorney Act
Finally, our Patent Attorney Act having been drafted for more than 10 years has successfully been effective from January 11, 2008. As mentioned in the past, our patent agents have the following sources:
1. One who has passed the High Examination in the technical field to become a technician in that field. Specifically, as long as one has a technician licence in a specific technical field, one can petition to have a patent agent licence through submission of a copy of the technician licence even without a training in patent practice;
2. An attorney-at-law, even just passing the bar examination recently having been loosened to have a pass rate between 5% to 10% can petition to have a patent agent licence even without a technical background, again even without a training in patent practice;
3. A judge retired from the court without experiences or technological background can also obtain a patent agent licence after he/she has petitioned to become an attorney-at-law;
4. A patent examiner, after two years of examiner practices, can also petition to be granted a patent agent licence; and
5. The most incredible person is an accountant who has nothing to do with the patent-related matters can surprisingly petition to automatically become a patent agent.
In the newly enacted Patent Attorney Act, Article 35(6) provides that the IPO shall stipulate a profession training regulation for the following persons, who need not attend the patent attorney examination:
1. Who qualifies as one of the above Items 1, 2, 3 & 5, holds a patent agent licence and has practiced the patent-related matter for more than one year;
2. Who qualifies as one of the above Items 1, 2, 3 & 5, serves as a public servant engaging in the patent substantive examination for at least 2 years, holds a patent agent licence and has practiced the patent-related matter for more than one year;
3. Who is a dedicated patent examiner, engages in the patent substantive examination for at least 2 years, holds a patent agent licence and has practiced the patent-related matter for more than 3 years.
Accordingly, current patent agents, if desiring to become a patent attorney, need to attend the courses designed for such switch. Such switch if desired should be petitioned before January 2009. IPO has proposed therefor a Profession Training Regulation. It is to be noted that a patent agent having not become a patent attorney could still practice in the patent field except only the patent can appear before a court and that the old Patent Agent Regulating Rule was abolished as soon as the Patent Attorney Act becomes effective. The designed courses include 60 hours for theories and practices, including professional ethics, patent regulations (patent laws, patent-related part of Paris Convention, TRIPs and PCT), procedural examination guidelines and practices, substantive examination guidelines and practices, Utility Model formal examination guidelines and practices, Design substantive examination guidelines and practices, patent classification and search, patent invalidation examination guidelines and practices, and patent prosecution and dispute case studies, and 7 hours of test. Such courses can be completed through physical classes and/or digital learning at the expenses of the trainees either by IPO itself or an institution it appoints.
The test in respect of three subjects of patent regulations, patent practices and the specification drafting could be taken only by those who have received the digital learning or attended at least 2/3 of the physical classes. The testee will be considered having passed the test if earning an average above 60 without a 0-score subject or the specification drafting lower than 50. Fails can re-attend any tests held before January 11, 2011.
Since the old Patent Agent Regulation Rule has ceased to operate, one who being not a patent agent from the past desires to become a patent attorney under the current Patent Attorney Act needs to take and pass a patent attorney examination as provided by Patent Attorney Examining Rules for High Examination of Special Professional and Technological Persons (hereinafter referred to as PAER). Under PAER, a person having a related background, e.g. being graduated from a college from any department of technologies, IP, design, law and information management, or its equivalent, without a negative qualification, e.g. receiving a penal servitude of at least 1 year, may attend the patent attorney examination testing 6 subjects of patent regulations, administrative procedural law and code of administrative proceedings, patent examination guidelines and patent prosecution practices, calculus, common physics or common chemistry, either professional English or Japanese, and any one of engineering mechanics, biotechnology, electronics, physical chemistry, basic design and computer structure. Similarly, the examinee will be considered having passed the test if earning an average above 60 without a 0-score subject or the last subject lower than 50. Fails can re-attend any examination held once per year for times as many as they want.
According to the Patent Attorney Act, any foreigner may become a local patent attorney by attending and passing the patent attorney examination and should seek approval from the IPO. Any one who passes the patent attorney examination needs:
1. Pass the pre-practice training;
2. Register with the IPO; and
3. Join the Patent Attorney Association,
before practicing unless the Patent Attorney Association has not been established. Under Article 12 of Patent Attorney Act, a patent attorney shall not have any of the following acts:
1. Deceiving or cheating the IPO or the appointer;
2. Soliciting business by an inappropriate means;
3. Revealing or stealing contents of the entrusted case from the appointer;
4. Publishing an ostentatious or threatening notice in the name of one¡¦s own or other;
5. Allowing another to practice in his/her name.
It is a popular practice at the present time for quite a lot of local patent firms to run their firms by ¡¥borrowing¡¦ the patent agent licence from others since the owner of the patent agent licence might not have the patent knowledge and will not engage in the patent practices while those who have patent-related knowledge do not have patent agent licences. Through the enactment of the patent attorney act and the abolishment of the patent agent regulating rule, this abnormal phenomenon will get gradually rectified.
According to Patent Attorney Act, as soon as there are 15 patent attorneys registered with the IPO, there should be established sole patent attorney association for receiving any qualified patent attorney thereunder at the capital. The president of the association can be reelected once.
Intellectual Property Court Organizing Act (IPCOA)
Till now, any intellectual property (IP) dispute resorting to court for solution is heard by the respective civil or criminal court as the case may be. For a trademark or some copyright cases, the court is able and willing to take its own decision as to whether there are damages or infringement. For a patent, unless a design patent is involved in, and other copyright cases, the court normally declines and refuses to decide on the merits of the subject matter as to whether there is an infringement or what the damages are since the relevant judges, normally without a technological background, generally do not believe they are eligible for such decision. While this may denote that the judges are kind and humble, this needs not necessarily correct or reasonable in that there are judges without any technological degree in the world who could wonderfully decide a technology-based case. The governing issues in this regard should include:
1. Whether the case is fully debated;
2. Whether all decisive issues have been fully revealed;
3. Whether the revealed issues have been fully presented and debated; and
4. Whether the judge has fully understood all the fully debated decisive issues and then is able to correctly interpret the laws to be applied.
It appears that the above governing issues are not alien to a reasonable mind of a competent judge. Nevertheless, we could contend that no local judge in the civil or criminal court is ever willing to confront with the above governing issues by her/himself in a patent-governing case or a copyright case much related to techniques. Speaking otherwise, the judge in this situation will refer the key issue, i.e. whether there is an infringement, to a publicly credible entity, by which the court can simply apply the laws for decision. The problem in this circumstance resides in that the report submitted by the publicly credible entity needs not necessarily correct or accurate since it normally is a research entity possibly equipped with patent engineers. Without an opposite report from another publicly credible entity, a qualified patent attorney cannot convince the judge the first report is wrong or arguable. Accordingly, it would not be too much wrong if we take that a patent litigation is much related to the wrestling of reports from the so-called publicly credible entities, which are co-designated by the highest executive authority, the Executive Yuan, and the highest judicial authority, the Judicial Yuan. Although they are commonly recommended to be publicly credible by these two Yuans, they are normally only publicly credible for the judges/courts and laymen. Nevertheless, it is enough to run the state or rein in the social order since it is the court which decides what justice and right is. For some practitioners, these some 70 entities are never publicly credible not simply because most of them have not been well equipped to soundly prepare the relevant report, some of them do not have proper persons to prepare the report and others of them straightforwardly refuse to prepare the mentioned report. For a patent infringement report, the costs normally range between NT$ (New Taiwan Dollars) 30,000 and 80,000 although there is an entity always trying to charge at least NT$1,200,000, which can thus rarely capture the opportunities of being entrusted with a case.
In order to counteract a patent infringement claim, oftentimes, the accused petitions the invalidating proceedings against the asserted patent before IPO. The court, in fact the judge here, would like to smile then since it will suspend the case pending the result of the invalidating proceedings, which, however, might last more than 6 years, e.g. two years before IPO, 1 year for Board of Appeals, 1 year of High Administrative Court and 2 years for Supreme Administrative Court. Accordingly, the patent litigation in Taiwan is a tactic-directed strategy but not an effective means for claiming one¡¦s rights. This is partly why a lot of Taiwanese high-tech companies would like to spend a lot of money to claim patent rights in the US rather than have a cost-effective litigation in their homeland here. Due to the culture, common practices and economic strength and importance in the US, not only the US patent or specification is more delicate, but also US case precedents provide much information in solving or guiding how to solve the disputes in construing the claim, according the claim scope and determining whether there is an infringement. In order to pursue the state the US is enjoying, we have Intellectual Property Court Organizing Act (IPCOA) promulgated on March 28, 2007.
In Article 2, IPCOA provides that the IP court shall try the civil litigation, criminal litigation and administrative litigation for IP matters. Article 3 specifically provides cases under jurisdiction of the IP court include:
1. The first and second instances of Civil suits arising from IP rights protected under the Patent Law, Trademark Law, Copyright Law, CD Regulating Regulation, Trade Secret Law, IC Layout Protecting Law, Plant Variety and Seedling Act or Fair Trade Law;
2. A criminal case appeal against the decision of the first instance through the normal, summary or negotiating proceedings in the district court in respect of offences provided in Articles 253~255 (trademark infringements), 317 (trade secret revelation) or 318 (trade secret revelation by public servant) of the Criminal Code, Trademark Law, Copyright Law, or Article 35(1) in respect of Article 20(1) (using other¡¦s famous mark or mark known to the relevant public) or Article 36 in respect of Article 19(5) (business espionage) of the Fair Trade Law provided that this shall not apply to a juvenile criminal case (speaking otherwise, for a criminal case, the IP Court will only try the second instance);
3. The administrative proceedings or the specific performance matters of the first instance arising from the IP rights protected under the Patent Law, Trademark Law, Copyright Law, CD Regulating Regulation, IC Layout Protecting Law, Plant Variety and Seedling Act or Fair Trade Law;
4. Cases provided by other laws or prescribed by Judicial Yuan.
The reason why the first instance in the criminal case is not subject to the jurisdiction of the IP Court is because in a large-scale or heavier crime, e.g. a mass reproduction for counterfeited goods is always made in concealment. For better and effective investigation and curb to this effect, each respective local court and every local prosecutor office therein could conveniently exercise nearby timely and efficient measures in locating, investigating and/or curbing the distribution of the counterfeited goods.
In the beginning, there will be only one IP court until a branch court is deemed necessary. In trial, according to Article 6, there will be one judge for trying the case in the civil proceedings of the first instance or the summary administrative proceedings. For the civil or criminal appeal or interlocutory appeal of the second instance or the normal administrative proceedings, there will be 3 judges for organizing a collegiate tribunal.
According to Article 13, qualifications for serving as an IP court judge includes:
1. One having been an IP court judge;
2. One having served as an independent judge or independent prosecutor at least two years or as both a judge or prosecutor at least 5 years and a public servant not lower than the 6th rank more than 10 years;
3. One having passed the bar examination more than 12 years of lawyer practices and practiced as a lawyer for IP cases more than 8 years with a certificate in respect of excellent practices;
4. One having served as a dedicated professor, deputy professor or assistant professor more than 8 years, instructed IP law courses more than 5 years and authored a special work;
5. One having served in Academia Sinica as a researcher, deputy researcher or assistant researcher more than 8 years and authored a special work related to IP;
6. A public servant having ever been or being higher than the 10th rank and handled examination, appeal or juristic system business related to IP more than 10 years.
From the qualifications set above, judges in the IP court must have a qualified background although they themselves need not have a technological background. Article 14 also provides that the IP court judges should attend in-service training courses for upgrading the decision quality. It goes without saying that qualified persons can always generate quality results. Nevertheless, it is believed that one who can skillfully manipulate the above-mentioned four governing issues will be more qualified than one who is qualified under IPCOA but could not well disentwine the matter which is entangled by the above-mentioned four governing issues.
In order to backup the technological understanding to an IP case, Article 15 empowered the IP court to establish technique-examining officers for making technical assessment/judgment, collecting, analyzing and providing technical information and participating in the proceedings as the judge may instruct. It certainly is true that a patent (or copyright possibly) combines therein both a technique and a law factors but it is another issue/matter whether a combination of a technical person and a judge will try the IP case accurately and perfectly. Although it might be a regret that persons of both a technological background and a law background are not devoted themselves to serve as the judges, it would appear whenever there is a judge who has a clear mind to be capable of precisely discerning the above-mentioned four governing issues, s/he would be able to decide the case skillfully and wonderfully even if s/he does not have a technical background in that whenever there is a decisive technical issue, s/he would be able to duly consign such issue to be properly clarified by pertinent technical person(s).
According to Article 16, the technical examiners include patent examiners and trademark examiners and are selected from the following sources:
1. A certified excellent patent examiner or trademark examiner having served in such position for at least 3 years;
2. A certified excellent person who has a master degree and serves as a patent examiner or trademark examiner or an assistant examiner for at least 6 years;
3. A certified excellent person who has a bachelor degree and serves as patent examiner or trademark examiner or an assistant examiner for at least 8 years;
4. A college or university lecturer for at least 6 years;
5. A person who has served as a professor, a deputy professor or an assistant professor for at least 3 years; or
6. A person who has served as a researcher for at least 6 years and has been certified to have authored an IP-related work.
Under Article 16(4), ¡§pursuant to the instructions of the judge, the technical examiner provides the technical judgment, collection of the technical information, analyses and the technical opinions for the case and participates in the proceedings as provided by the Act.¡¨ Although the technical examiner should provide the technical judgment, analyses and/or technical opinions in a specific opportunity, what the technical examiner provides or takes are not decisive or dominant but are provided merely for the reference and consideration of the judge for final judgment. Accordingly, if what the technical examiner provides or takes are to serve as bases for final judgment, they shall be put for debate in the court by the parties.
According to Article 42, the decision of litigation in the IP court shall be made within a period prescribed by a decree of the Judicial Yuan. Although the period prescribed to be followed by other courts is not well abided by, it is believed that such period after prescribed, will be soundly followed by the IP court since it is one of the major purposes for the IP court to be established.
According to Article 43, information regarding the trade secret of the party or a third party shall not be disclosed in the decision of the IP court. A competent judge should have such an alert mind.
Intellectual Property Case Trial Act (IPCTA)
Enacted on March 28, 2007 to be effective from the date the Judicial Yuan will prescribe, the Intellectual Property Case Trial Act provides therein what are believed deserved to be specially stipulated for trying an IP lawsuit. According to Article 2, a trade secret under IPCTA is referred to or to be qualified as one stipulated in Article 2 of the Trade Secret Act.
According to Article 3, the court may try a case through equipment upon request or ex officio if it is possible for direct trial through scientific equipment for mutual audio and video transmissions between places of the court and a party, representative, attorney, defender, adjutant, witness, surveyor or any interested party, after consulting with the parties. In such situation, the court appearance notice shall indicate where the site is for the trial. If a signature on the court record or document from the interrogated is necessary, the court may have it electronically transmitted for confirmation and signature thereby to be facsimiled or otherwise back to the interrogatory court. This is quite a friendly measure although it cannot be made certain how good-hearted it will eventually turn out to be.
According to Article 4, the court may instruct the technical examining officer to perform the following duties:
1. So far as the factual and legal matters are concerned, makes explanations or asks questions for the parties based on the expert knowledge to clarify the issues and the lawsuit status: As such, it appears IPCTA takes that the technical examining officer will somehow be initially or subsequently equipped with some legal knowledge in order to be able to perform some tasks from the legal aspect.
2. Directly asks the witness or surveyor questions: Through this provision, the technical examining officer has participated in fact in trying the case.
3. States the opinions for the judge about the subject case: If the judge is as passive or conservative as in a civil, criminal or administrative court, the technical examining officer serves, as a matter of fact, as the core role in an IP case so that it will not be too much wrong if we take that the technical examining officer predominantly decides an IP case.
4. Assists in conducting investigations while preserving proofs: Proofs in the legal side generally could be investigated by the judge herself/himself although an assistant to this effect needs not necessarily have a legal background. For proofs in respect of the technical nature, the technical examining officer is assumed to do a good job with respect to investigation to this end.
Article 6 provides that the provisions for summary proceedings and small sum proceedings respectively stipulated in Chapter 3 and 4 of the Code of Civil Proceedings are not to be applied in a civil case in respect of an intellectual property. That is, all IP-related cases are to be tried in the normal proceedings before the IP Court no matter how small the sum of potential damages might be. Article 7 reaffirms that any civil case arising from Articles 3(1) and 3(4) of IPCOA is to be handled by the IP court.
Article 8(1) provides that ¡¥any known special professional knowledge can be adopted for basis of decision only after the party has been offered with an opportunity to debate thereon.¡¦ In the Criminal Code, there is a provision that a person cannot be immune from being punished simply because s/he did not know there is a stipulation to the effect. Accordingly, it would appear that any person who lives in any country of this world is obliged to recognize how the nation establishes the laws under which nationals are assumed to follow in order to stay away from suffering from any disadvantages arising from disobeying any of the laws. It seems from this provision that the court is very humble and polite to allow the opportunity of debating the known special professional knowledge on which it can base to decide the case. Nevertheless, it is to be noted that the known special professional knowledge here does not include the knowledge about the laws in the expertise of the judge. Specifically, if we interpret negatively this provision, we obtain:
1. For the professional knowledge which is within the expertise of a judge from the recognition of a court, the judge needs not provide any opportunity for the party to debate thereon;
2. For the professional knowledge, e.g. the patent-related techniques or doctrines which are not within the contemplated expertise of a judge from the court¡¦s understanding, the court needs to provide an opportunity for the party to debate thereon. Through which, since the judge has duly provided the chance for clarifying the issue, the court or the judge is not to be blamed anyhow.
Accordingly, it takes time to see and ascertain whether such provision is progressive or regressive eventually.
Article 8(2) provides that ¡¥the presiding or the reporting judge shall clarify for the parties the dispute issues on the legal relations of the case, and may exercise a timely expression of legal opinions thereof and a timely revelation of the discretional evaluation of evidence.¡¦ Interpreting this provision positively, the judge is kind enough to clarify for the parties whether the disputes or issues in a case exist so that a party can put its efforts in debating thereon. Further, since the judge might be willing to express its legal opinions in advance, the party can escape from the adverse results arising from the judge¡¦s legal opinions which are mistaking or wrong by demonstrating in time what is the reality or what are right in order to curb the prejudicial legal opinions from forming in the mind of the judge. In addition, if the judge could reveal how or what the discretional evaluation of evidence in her/his mind is or is to be formed, the opportunity of appeal must be significantly reduced since after the dispute issues have been fully debated or clarified, the party would know it will get the same result even if the case is appealed. This should be an ideal mode for court proceedings. If we interpret this provision negatively, we might have:
1. Since for a current litigation, both parties normally are represented by attorneys, it is not so important whether the judge will clarify for the parties where the dispute issues are since the attorneys for both parties should be able to do this task well. Certainly, if the judge is willing to take part in investigating what the legal relations of the case actually are, through the joint efforts, effects resulting from brainstorming might help to ultimately solve and/or decide the case in order to eventually terminate the disputes between parties neatly and effectively.
2. According to this provision, the judge may, but not shall, exercise a timely expression of relevant legal opinions. Although the judge normally is ample in legal knowledge, it is not necessitated that the viewpoints taken by the judge on the involved legal issues must be accurate and correct. Although as a judge, s/he can objectively hear the case to then equitably decide the case in theory, every person, in practice, has her/his subjective attitude of a peculiar nature may not be able to wonderfully discern and get down to the real core of any event to flawlessly and correctly decide the case on her/his own. As such, if a potentially defective legal opinion in the mind of the judge is revealed at an earlier stage, lawyers from both sides could help correct such prejudicial decisive evaluation in time before the case is decided in order that the disputes in the case can be really extinguished. It is never seldom found that the judge, in appearance, carefully listens to what attorneys from both parties rigorously debate but finally decides the case from the legal opinions of her/his own without offering any opportunity for debate by the opposite attorneys. This should not be the way a court should operate since a court is a place where a justice is to be sought. If the court can decide the case from some legal viewpoints never known to any of the opposite attorneys, how one can anticipate succeeding in seeking justice from the court. In this way, the court is a place for arbitrary decision by the judge who is an artisan in laws without wisdom and justice happens merely occasionally rather than normally if the judge has the rights to always conceal his legal opinions on a specific case from being challenged or debated by the opposite attorneys. Accordingly, this provision, the judge may exercise a timely expression of relevant legal opinions is an evil stipulation since:
A. Without this provision, the judge might feel compelled, through self consciousness, self subliminal righteousness or enlightenment from either of opposite attorneys, to reveal at a proper opportunity the relevant legal opinions in her/his deep mind;
B. With this provision, even if the judge feels like or somehow compelled, through likewise reasons above-described, to reveal something about relevant legal opinions about the case in the mind, s/he now gets the legal basis not to so reveal for reasons of any sort. How terrible it is!
3. Under this provision, the court may conduct a timely revelation of the discretional evaluation of evidence. Following traces above-mentioned, we could have a good stand to conclude this clause is as evil as the preceding clause in that:
A. Although the legislation should be intended to encourage the revelation from the judge how s/he makes her/his discretion in evaluating an evidence, it may turn out to be a legal basis for the judge to decline the revelation of the discretion if the clause is interpreted negatively, with the word ¡¥may¡¦ therein;
B. As is known, the win or loss of a lawsuit of a party normally depends on evidence. The value of a specific proof depends on how it is interpreted to represent or have represented. How a proof is interpreted depends on how it is to be evaluated. How a proof is evaluated depends on how one makes her/his discretion in retrieving message or information divulged from the proof. Whether one can make a sound discretion depends on many factors including the first one, i.e. whether s/he has a fair or equitable mind. The second one would be whether the judge is enough skillful in retrieving the message/information. The third one would be whether the judge is competent enough in interpreting the retrieved message/information from the evidence. All these three and other factors include subtle, implicit or implied clues to be resolved. Although the judge might be smart and diligent, it does not necessitate that s/he can by her/himself soundly perform all exemplified tasks mentioned in this paragraph. Accordingly, it is dangerous for a judge who will not always reveal how s/he exercises her/his discretion on interpreting evidence to signify the justice a court is presumed to strive for. It is also unfair for a party seeking justice before the court if the law allows a judge who will not always reveal how s/he exercises her/his discretion on interpreting evidence to decide a case therefor.
According to Article 9(1), ¡¥if an offensive or defensive method proposed by a party involves a trade secret of its own or a third party, the trial may not be made public if the court considers appropriate upon so request by the party, or if both parties agree not to make the trial public.¡¦ It appears unreasonable that the court could consider the request from a party that the trial should not be made public inappropriate if there really involves a trade secret. The party suffering from losses arising from the disapproval from the court of not making the trial public in a reasonable chance might claim damages against the court under National Damages Act. Accordingly, in this provision, the word ¡¥may¡¦ shall be replaced with ¡¥shall¡¦ in order that the court or the state can stay away from damages claim. By the same token, Article 9(2) stipulating that ¡¥if there is litigation information involving the trade secret, the court may decide disapproval or restriction of review, copy or photograph of the litigation information upon request or ex officio¡¦ shall make the same literal replacement in order to remove the potential liability of the state. This issue might deserve further discussed through the provision of Article 11(1) stipulating that ¡¥if a party or a third party shows the trade secret it holds complying with either of the following cases, the court may issue a secret-holding order to the opposite party, agent, adjutant or other interested litigation party:
A. The contents in the briefs of a party record the trade secret of the party or the third party or a proof investigated or to be investigated involves the trade secret of the party or the third party;
B. In order to prevent the trade secret in the preceding item from being disclosed or being used not for the purpose of the proceedings to jeopardize the business activity of the party or the third party based on the trade secret, it is necessary to limit the disclosure or use thereof.¡¦
Combining these three provisions, we would like to further discuss the relevant issues as follows:
1. The word ¡¥may¡¦ used in the articles might simply originate through an insufficiently deliberate legislation. Specifically, it might be possible that what the legislators intentionally try to convey by these provisions is that in any a similar situation, the court will never fail to consider the necessity of keeping secret. Accordingly, the court may interpret these articles in a way that ¡¥shall¡¦ rather than ¡¥may¡¦ has been used in the article. Although the law can operate this way wonderfully, it is still considered that legislators had better revise the law by replacing the used word.
2. The above reasoning in our mind will feel strengthened if we consider the cases mentioned in the last article since we cannot justify ourselves not to adopt secret measures for either case thereof.
3. Although it may be possible that some one might claim that an asserted case, e.g. either case in the mentioned article, may not be true so that the word ¡¥may¡¦ used in the articles are sound in order that the court may exercise its due discretion, this is not convincing since when the correct word ¡¥shall¡¦ is used, the court needs only take secret measures for a specific case when what is claimed is shown to be true. Accordingly, we could conclude here that to use the word ¡¥may¡¦ in these articles is negligence from the legislators.
In order to make accurate a petition of the secret-keeping order, the petition, according to Article 12, should state who the taker of the secret-keeping order is, what the trade secret to be protected is and the reason why it is so applicable. In order to precisely delineate what a secret-keeping order will be, according to Article 13(1), the decision of allowing the secret-keeping order shall describe the trade secret to be protected, the reason for protection and the contents forbidden. Article 13(4) provides that the decision dismissing the petition of secret-keeping order can be appealed.
Article 16(1) provides that ¡§if a party claims or defends that there exists a cause of being cancelled or revoked for an intellectual property right, the court shall by itself determine whether the claim or defense is viable without applying provisions regarding staying the proceedings as stipulated in Code of Civil Proceedings, Code of Administrative Proceedings, Trademark Law, Patent Law, Plant Varieties and Seedlings Act or other applicable law.¡¨ As noted earlier, in the past, whenever there is an infringement claim, the accused infringer normally tries to initiate an invalidating proceeding before the IPO, by which the proceedings before the court could be stayed, pending the results of the invalidating proceedings. Such strategy is no more applicable under this provision since the court is required to determine by itself whether such a claim is viable without resorting to the staying provision in any other applicable law. Although there is no prohibition for the court to determine by itself whether a patent is valid or not in the past, no court is brave enough to do so. There is no exception for decision of the claim or defense by the court itself under this Act in order to hasten the litigation proceedings and to competently decide a case and/or the validity of a patent, which are ones of the major purposes for this Act to be enacted.
Article 16(2) provides that ¡§if the court in the preceding paragraph considers there is a cause for cancellation or revocation, the owner of the intellectual property right shall not make any claim against the opposite party in the civil action.¡¨ In as much as the existence of the intellectual property right is the prerequisite of the infringement claim, it naturally ensues that the right owner can make no more claim when there exists a cause of cancellation or revocation, since the intellectual property right is to be eventually cancelled or revoked.
According to Article 17(1), ¡§for judging the claim or defense made by a party under the first paragraph in the preceding article, whenever necessary, the court may order the intellectual property authority to intervene in the action.¡¨ Without the enactment of this Act, upon invalidating a patent, the parties in the invalidating proceedings are the invalidator and the IPO in the past and the proceedings can proceed without the involvement of the patentee, which means that the IPO must defend the rights of the patentee or itself for showing that it did not improperly render an office action granting the patent although the patentee can serve as an intervener through petition or order from the court in practice. With this new Act, the positional relationship between the IPO and the patentee can be rectified to be correctly reversed since the government authority shall not strive for protecting a private right and the court needs not stay in the shadow that the IPO has made a competent decision on the validity of the patent, which shall not be arbitrarily challenged. Nevertheless, the Executive Yuan has different opinions in this respect and specifically expresses that in such case, it is enough for IPO to serve as a witness rather than an intervener since it would appear somehow arbitrary to assign only a person or expert from the IPO to immediately orally state the opinions of the IPO in the trial site when compared to the deliberate action every time it makes so that it never appropriate for the IPO to serve as a party in the case.
According to inter alia Article 18(4), ¡§where an opposing party has no competent grounds but refuses an order of preservation of evidence, the court may enforce such order by force, but only to the extent necessary, and may demand assistance from the police if necessary.¡¨ Article 18 is enacted to facilitate the deposing of evidence by the right owner since it is considered to be easy for proofs of infringing facts or damages scope to get extinguished or concealed. As such, it will be natural to ensue the provision of Article 18(4).
Under Article 19(1), ¡§an intellectual property case of the first instance shall be solely tried by one judge¡¨ whereas Article 19(2) provides that ¡§the first instance decision of an intellectual property case may be appealed to the Intellectual Property Court for its collegiate trial.¡¨ Specifically, for a case to be handled by the IP court, its first instance and second instance are both to be tried by the same IP court but by different tribunals thereof with the one for the latter having 3 judges. According to Article 20, ¡§the second instance decision of an intellectual property case may be appealed to the third instance court unless otherwise provided¡¨ where the third instance court is the Supreme Administrative Court and the Code of Civil Proceedings provides that a case involving a relatively small sum (NT$1.5m) cannot be appealed to the third instance. Although a normal court can entertain a payment order case, Article 21(2) provides that ¡§the court granting a payment order shall transfer the dossier documents to the Intellectual Property Court if the debtor has legally opposed the payment order,¡¨ by which the civil proceedings for an intellectual property case can be heard by the IP Court as contemplated by this Act. Article 22 provides that any petition for a provisional seizure or a provisional measure (preliminary injunction) for an IP case shall be made before the IP Court. Considering the IP products, especially the high-tech ones, e.g. the semiconductor products having a short life cycle so as to have been phased out if prohibited from being sold or manufactured until a case decision becomes final or irrevocable, it thus leads Article 22(2) to provide that ¡§a petitioner seeking a measure maintaining the temporary status quo shall show with regard to the legal relation in dispute that it is necessary to prevent material harm or avoid imminent danger or other similar circumstances provided the court shall dismiss the petition if what it shows is insufficient¡¨ and Article 22(3) to provide that ¡§while the grounds for the petition has been shown, the court may still order the petitioner to submit a bond before granting the measure maintaining the temporary status quo.¡¨
As noted above, according to Article 3(2) of the IP Court Organizing Act, for the criminal cases, the second instance is to be tried by the IP Court. Accordingly, Article 25(2) of IP Case Trial Act sticks to such provision even if the court of the first instance jointly decides the IP criminal case and another implicated criminal case but in the proviso providing an exception only when ¡§the intellectual Property Court may consolidate the cases and transfer them to the competent High Court if other criminal case is a heavier crime and has complicated details.¡¨
According to Article 31(1), ¡¥the following administrative actions belonging to jurisdiction of the Intellectual Property Court:
1. The first instance matter and the enforcement matter arising from an intellectual property right relating to the Patent Law, Trademark Law, Copyright Law, CD Regulating Regulation, IC Layout Protecting Law, Plant Variety and Seedling Act or Fair Trade Law;
2. Other matters subject to jurisdiction of the Intellectual Property Court under applicable laws.¡¦
The principle of exclusive jurisdiction under the IP Court is reconfirmed by Article 31(2) providing that ¡¥other administrative action jointly initiated with or lodged in addition to an action in either item of the preceding paragraph shall be made before the Intellectual Property Court.¡¦
Article 33(1) provides that ¡¥in an administrative action concerning to cancellation or revocation of a trademark registration or cancellation of a patent right, the Intellectual Property Court shall take into account a new evidence submitted for the same grounds of cancellation or revocation before conclusion of the oral debate.¡¦ By this, the law is to make clear that any new evidence submitted so late in the administrative proceedings even only until before the IP court shall be considered thereby in order to resolve the controversial issue from the pure theory of law that any new evidence shall be put in a new administrative action in as much as the original office action has not been erroneously rendered and the law does not prohibit the institution of a new cancellation or revocation procedure. While this provision has obviated some disputes in the matter, it is still controversial if we try to define what is meant by ¡¥the same grounds.¡¦ For example, as discussed earlier for Article 23(1)(12) of the Trademark Law, ¡¥likely causing the public to confuse or mistake¡¦ and ¡¥likely abating distinctiveness or reputation¡¦ of famous trademark or mark are two different categories for protections of a famous trademark. Are they the same grounds?
In explaining how the new system will work, the Higher Administrative Court has made it clear that if an invalidation action is brought to it because the invalidator has used a cited reference A to assert the patent in issue bears no novelty, there will be the same grounds if the invalidator further cites a new reference B for attacking the patent in issue is in lack of novelty. This might be easily understandable since the grounds keep related to novelty and the instance benefits belong to the invalidator so that the invalidator should be free to cite the new reference for challenging the novelty of the patent in issue as long as the invalidator is willing to take the loss of the instance interests. Article 33(2) of the IP Case Trial Act might help rationalize this reasoning by requiring that the IPO submit a response to the reasons made by the plaintiff for the new evidence. According to the Executive Yuan, this provision shall be deleted since it is unreasonable for the court to require the present person from the IPO to express or take her/his opinions or decision immediately before the trying venue, the court has been equipped with the technical examiner and such provision appears to be based on the recognition that the IPO is the defendant of the case. In addition, the Executive Yuan feels like that the IP Court consolidates the civil proceedings and the administrative proceedings into IP Court proceedings by which the position the IPO takes on the validity of a specific IP right in the civil proceedings will ultimately decide the validity of the specific IP right before the IPO so that the dispute in a case can be solved by the same proceedings in order to save the bifurcation of the decisions and win the reliance from the public on the IP Court.
Article 34(2) provides that ¡§a judge handling the intellectual property civil or criminal action may participate in the trial of the intellectual property administrative action involved in the action matter, to which Article 19, Subparagraph 3 of the Code of Administrative Proceedings shall not apply,¡¨ by which the trial avoidance provisions in the Codes of Civil and Criminal Proceedings shall not apply in order to encourage or permit the same IP Court judge to participate in the implicated IP actions for better obviating the necessity of unifying decisions respectively resulting therefrom.
The transition provisions are provided in Article 37(1) that ¡¥an IP civil case pending before a district court or high court before this Act becomes effective, the court jurisdiction and trial procedures shall comply with the following:
1. The respective court shall conclude the case pursuant to procedures stipulated under this Act as its progress may be provided that the effect of the proceedings already proceeded under the legal procedures shall not be affected;
2. The case with a decision made by a district court having been appealed but with its dossier documents having not yet sent to the appellant court shall sent to the Intellectual Property Court for the second instance trial.¡¦
Specifically, in order to save the judicial resources, if it would appear time- or labor-consuming for switching a case into jurisdiction by the IP Court, the original court in which the case is pending shall continue its jurisdiction until the procedures of the relevant instance are concluded. Nevertheless, for such continued jurisdiction, the relevant court shall follow any specific procedures stipulated in this Act for an IP case.
With the enactment and operation of IP Court Organizing Act and IP Case Trial Act, let us wait and see how they would work to improve our IP environment.
Code of Administrative Proceedings (CAP)
There are a few enactments and amendments made to ACP. We will discuss only two major ones. The first one is who can appear before the Administrative Court (AC). In the past, any interested party can have relevant persons acting on its behalf to appear before AC. Under the amended law, especially the new AC practices, only three persons qualify under ACP can represent a party to appear before the AC. Under Article 49(2) of CAP, ¡§an administrative action shall use an attorney-at-law as an action agent who could be one of the following cases if not an attorney-at-law:
1. For tax administrative matters, one qualifying as an accountant;
2. For patent administrative matters, one qualifying as a patent attorney or a patent agent under applicable laws;
3. For a party being a public juristic person, central or local authority, non-juristic person group under the public laws, its person in charge of legal system, legal matters, appeal matters or action-related matters.¡¨
Specifically, under the law in the past, although the number of agents is limited to three, it is not exactly controlled. For example, an attorney can bring therewith an assistant without counting the assistant into the limited number while the assistant can appear before the court to help the attorney clarify something before AC. This is no more applicable. There has been a battle between the attorneys-at-law and accountants as to whether an accountant can appear before AC. Although the Bar Association is very influential and powerful here, the Accountant Association is never a low hand in the political side. As a result, there was the stipulation of Article 49(2)(1). Article 49(2)(3) shows the state violence since only the public authority or organization can enjoy the exception to have its person serve as an assistant or an action agent. For explaining away this potential mishap, the authority might argue that the above assertion is not correct in view of the provision of Article 49(3) providing ¡§to appoint a non-attorney in the preceding paragraph as an action agent shall be approved by the chief judge,¡¨ by which the assigned person under Article 49(2)(3) should be competent enough in order to be approved by the court. People of skepticism as the author of this article is might suspect that by the provision of Article 49(3), the court might arbitrarily use this provision to reject the lawful representation by persons in Articles 49(2)(1) and 49(2)(2) simply because some judge prejudicially feels unhappy with some lawful appointee in view of the provision of Article 49(5) providing that ¡§the chief judge may optionally decide to revoke the approval in the preceding two paragraphs to be served with the appointer in the action.¡¨
Another major change in CAP is that there is no court fee in the past except NT$340 postage for mailing court papers including court appearance notices to each party in each instance. Under the amended CAP, the first instance court shall collect NT$4,000 except NT$2,000 for the summary proceedings. If appeal to the decision of the first instance is desired, additional one half shall be collected, i.e. for appealing before the Supreme Administrative Court, the court fee shall be NT$6,000. It is said by collecting such fees, the cases to be presented to the ACs would be reduced. From the viewpoint of the author, this might be true only if the economy of Taiwan keeps going down.
It is to be noted that in the IP Court, although the court can decide everything, e.g. the validity, of the IP right in a specific civil case tried thereby, such decision is binding on the case itself. Specifically, others including the IPO will not be bound by such invalidity decision for the specific IP right in a specific case. In more details, a decision from the IP Court about a specific IP right can bind all parties only when the decision is made for an administrative appeal dedicated for disputing the validity of the specific IP right. Accordingly, with the establishment of the IP Court, it is not to merge or simplify the civil proceedings and the administrative proceedings into the same proceedings. Instead, there is provided a separate civil proceeding for resolving the civil disputes in addition to the original administrative proceedings before the same IP Court. Since there are two kinds of proceedings for a specific IP right before the same IP Court, there are voices advocating such proceedings, if occurring, shall be tried by the same judge in order to avoid bifurcated results in recognizing the same issue of validity.
Student Liability on Copyright
It is reported on November 8, 2007 that a prosecutor has first accused a student copying nearly one half of a text book in quadruplicate. In contrast therewith, in the past, the prosecutor always prosecuted the person in charge of the copying shop. In supporting the prosecutor to take such new measure for better protecting the intellectual property rights, the IPO reminds and urges the social public never to copy the textbook since such substantial copy will never qualify as a reasonable use according to the law.
As an alternative measure, the IPO continues to promote exchanging activities of the campus second hand textbook with the constant promotion through the establishments of second textbook exchanging counter and the website at http://2handbook.nasme.org.tw. As such, IP rights of others are protected, recycling the education resources are promoted and the cost of purchasing new textbooks is saved so that this is a three-party win strategy according to the IPO.
Adoption of Foreign Search Report and Examination Result
In order to shorten the pending time and to conclude the examination of a patent application for early acquirement of the patent rights by the applicant, the patent examination operation will include the adoption mechanism of foreign patent search reports and examination results for reference of patent examination. According to IPO, this measure has been effective since October 2007.
Specifically, from the viewpoint of IPO, in as much as respective industrial techniques get continuously enhanced, the same invention is usually filed in many countries or organizations in order to secure better protection therefor. As such, the filing quantity in various countries is rapidly increased. According to IPO, many governments or organizations, e.g. the US, Japan or EPO continuously introduce various policies and improvement measures for coping with the abrupt increase of the patent filing volume. For example, Japan-US, Japan-Korea or Japan-UK have cooperation program for the patent examination highway and Japan has a supporting system showing worldwide corresponding examination information of a specific application. Both of these, according to the IPO, are striving for shortening the examination time of the patent application in order to increase the competitive strength of businesses in the respective country. It appears that the IPO somehow errs in this respect since knowing the foreign corresponding examination information is primarily intended to gather together informative information for arriving at an accurate examination while the cooperation program for the patent examination highway is mainly contemplated to save the unnecessary waste of human resources in exercising the repetitive or even partially overlapping examination efforts, which are not what the IPO have exactly conceived. Further, it is baseless for the IPO to allege that shortening the examination time of the patent application can increase the competitive strength of local businesses since more than one half of patent applications in Taiwan originate from foreign countries. If the rationale taken by the IPO is correct, such measure is largely to increase competition strength of foreign businesses rather than local ones.
In order to cope with the increasing patent filing volume, in addition to enhance the patent examination efficiencies, the IPO per the suggestion of the Human Survey Service Group of the Executive Yuan stipulated in 2006 the Standard Operation Procedure of ¡§Handling Principles of Foreign Patent Application (HPFPA)¡¨ for the first office action of patent applications. By referring to ¡§Guidelines for Utilizing Search Report/Examination Result from Foreign Patent Offices¡¨ announced by Japan in 2007, HPFPA is further revised in respect of the judgment of claims, search scope of the prior art, how the IPO should act where no response is made from the applicant,¡Ketc. for harmonization with the international procedures.
In statistics, there are filed 47,841 invention patent applications in 2005 out of which 27,748 are filed by foreign applicants to have a 58% occupation whereas in 2006, there are filed 50,111 invention patent applications out of which foreign applicants filed 28,746 to occupy 57.4%. Accordingly, it would be effective to hasten the prosecution of the invention patent applications to increase the performance for serving the people by establishing the adoption mechanism of foreign patent search report and examination result and urging the applicant to automatically submit the foreign search reports and examination results for securing the patent right at an earlier stage. It appears that the IPO has failed to consider that HPFPA shall not be limited for application only to foreign applications since a substantial portion of the locally originated invention patent applications, as a matter of fact, were also filed in foreign countries. Accordingly, HPFPA shall also be applicable for locally originated invention patent applications if it is correct for HPFPA to be established. The key issue might thus reside in that although a few invention patent applications are still pending when foreign corresponding applications have been issued, the frequently seen situations are that most patent applications here were granted far earlier than those in other countries. Thus, it might be a false proposition for hastening the prosecution of the patent application through the establishment of HPFPA.
According to the IPO, the Trademark Mark Law does not exclude a name for potential trademark registration for identifying the source of goods or services. For example, there are ¡¥Lincoln¡¦ cars, ¡¥Mozart¡¦ chocolates and ¡¥Franklin¡¦ funds as long as the designated goods or services have nothing to do with the legend of the famous figure, although there are some countries banning such registrations.
A Mainland China governmental unit filed 3 trademark applications including the single word, Confucius, and designated to be used with goods and services related to educations. The quality audit panel in the IPO considers such trademark applications lack distinctiveness for identifying the sources of goods and services and thus initiated the canceling proceedings. It raises a lot of discussions and draws much attention from the public.
According to the IPO, since Article 30(1)(1) of the Trademark Law stipulates that ¡§the following cases shall not be governed by the effect of other¡¦s trademark rights: 1. Expressing, through reasonable using means in good faith, one¡¦s own name, title, or the name, shape, quality, function, place of origin of goods or service, or other descriptions of goods or service per se, not used as a trademark,¡¨ even if ¡¥Confucius¡¦ becomes registered, it never means others cannot use the word as long as there is involved in a reasonable using means in good faith.
Lengthening the Response Time for Foreign Applicants
Effective from January 1, 2008, the response period of the opinion notification letter for the first and second office actions of invention and design patent applications of a foreign applicant is extended from 60 days to 90 days and can be extended up to 180 days since the document translation and communication are time-consuming and this has been repetitively reflected by the foreign applicants, after taking the foreign regulations and current operations into consideration. In order this new measure not to adversely affect the processing time frame and the achievement of the examination quality, the patent attorney and the applicant are urged by the IPO to submit therewith the properly prepared materials as soon as possible rather than by the expiration of the original or extended deadline. It seems strange why earlier submission of response materials is related to the examination quality achievement.
For foreign originated applications receiving notification letters by December 31, 2007 or having an expiration deadline after January 1, 2008, the new measure will be applicable. Nevertheless, this new measure is not applicable to locally originated applications whose prescribed response period is still 60 days and can only be extended up to 120 days as in the past. It would thus be considerable whether this new measure is fair and justified for the local applicants in view of the expedient communication and worldwide frequent border-crossing activities nowadays.
A notification letter means an official letter issued by the IPO before the issuance of the formal office action, in which letter the IPO makes it clear that it is prepared to reject a specific application based on what kinds of reasons and solicits the convincing responses to these reasons from the applicant in order to obviate the eventual issuance of the formal office action or urge the applicant to submit powerful refuting arguments against the potential standpoints for rejection. Taken from the positive side, our IPO is too humble, well-mannered and humane to arbitrarily issue a formal office action. Taken from the negative viewpoint, our IPO is too shy or confident-less to straightforwardly express what it thinks, considers and decides without the introduction of the notification letter.
Proposed Patent Law Amendments
Seeing how the international IP environment transits, various patent law amendment issues are proposed for coping with the significant technological development. In addition, the IPO extensively collects opinions from various social sectors about how the current law is operating in order to actively find where insufficiencies or required amendments are. The potential amendments, except those discussed above, including the Design patent and Utility Model patent and technical report therefor, include:
1. Making full available for patent protections for animals and plants by making it clear the claim scope, right exhaustion, individual non-profit utilization, peasant exemption, compulsory license and cross license.
2. Reflecting under WTO, when the member has an impending danger or emergent case aims to improve the public welfare through nonprofit use, the IPO could compulsorily license the production of required pharmaceuticals in order to achieve the public sanitation by helping the developing or underdeveloped countries to obtain the required pharmaceuticals through compulsory license.
3. Making it clear that the patent right cannot enforce against the private behavior of non-commercial purpose.
4. Loosening the procedural provisions, remedying annuity payment beyond deadline and revising provisions relating to infringement, patent notice, indirect infringement, supplement, amendment and correction. In respect of infringement and indirect infringement, subjective requirements, patterns, scope of damages and evidence preservation will be dealt with. As to the patent notice, regulations in other countries will be consulted.
According to the IPO, with the advent of the knowledge economic era, the management, utilization and protection of the IP rights have become the major means for industrial development and international competition under the new economic era, any inputs from any sector for helping secure and remedy rights of the industry, increasing the effectiveness and quality of examination of the IP right and constructing a wonderful IP regulation environment for enhancing the innovative intention and state overall competition are earnestly welcome in order to foster an integral amended patent law.
Copyright Mediacy Group Regulation (CMGR)
Since CMGR becomes effective from November 5, 1997, there have been responses as to the practical difficulties in negotiating with the mediacy groups for license while the mediacy groups also take there are many drawbacks about the current fee rate review system hampering the effective performance of the mediating businesses. After the IPO collects the international information and practices and discusses and exchanges opinions with experts, scholars and various sectors in respect of fee rate review system, provision and production of collective work property index, parallel license of collective members and whether the quantity of groups to be established should be regulated, amendment highlights of CMGR are as follows:
1. The title is to be changed into ¡§Copyright Collective Management Group Regulation (CCMGR)¡¨ in order to be distinguished over the private mediacies.
2. Revise the definitions of CCMGR and the copyright collective management business in order to make it prominent what is regulated under CCMGR relates to the management of work properties for multiple copyright owners. CCMGR also makes it possible for copyright owners of works of different categories to organize collective management groups for facilitating the diversified utilization and management of works of cross-categories in this digital era.
3. There are added with conditions of establishment and grounds of quit of the collective management group in order to properly regulate the quantity thereof.
4. The current ¡¥advance review system¡¦ for the royalty will be changed into ¡¥memorandum system¡¦ so that the authority will intervene only when there is a dispute.
5. Revise the manner for providing information of properties under management by the collective management group and the obligation for producing the use list.
6. Make it clear that after a member quits the collective management group, if there is the non-expiring license contract entered into by the collective management group and the user, the user needs not additionally pay royalty to the quitted member for stabilizing the market order, and that the quitted member has the rights to ask the collective management group to pay it the royalty.
It is anticipated through the amendment, the copyright owners can be better protected and the user can acquire legal license more conveniently.
Proposed Amendments to Trademark Law
Since Taiwan is not a member of the Paris Convention, some obligations prescribed in TRIPs and Paris Convention have not been reflected in the Trademark Law. Although Taiwan is not a member of any world IP organization, it will get better internationalized if the Trademark Law is amended to reflect the spirits of the Singapore Trademark Law Treaty. For these and other considerations, the following law amendments are proposed.
Adding Provision about Exhibition Priority
Since Taiwan is a member of TRIPs although not one of Paris Convention, she has the obligation of following obligations under Paris Convention according to Article 2 of TRIPs protocol. Accordingly, a new Article 4bis is proposed as follows:
¡§Where goods or services of a trademark registration application are shown in an exhibition sponsored or approved by the ROC government, the trademark registration application designated for use in the goods and services will be deemed having been filed at the shown date if filed within six months from the date on which the goods or services have been shown.
The international exhibition the ROC government sponsors or approves shall be announced.
The second, third and fourth paragraphs of the preceding article shall be applied to this Article mutatis mutandis.¡¨
Expanding Subjects Protectible under Trademark Law
Under Article 15 of the TRIPs, ¡§any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.¡K Members may require, as a condition of registration, that signs be visually perceptible.¡¨ After experiences and practices of more than two years in respect of new types of trademark applications of sole color, sound and 3-dimensional shape, the IPO is prepared to expand the protectible subjects since it has become confident it can handle any kind of trademark application seeking registered a mark capable of identifying the source of goods or services. As a result of such enactment, Article 17(2) stipulating that ¡¥trademark in the preceding paragraph shall be presented in a visually perceptible device¡¦ shall be deleted. In order to properly announce and clearly define the protecting scope of a trademark subject, a requirement for trademark eligible for ¡¥expression by graph or character¡¦ is added by amending Article 5(1) to read ¡§a trademark under this law shall refer to any mark eligible for expression by graph or character and capable of causing the relevant consumer of goods or services to recognize it as identifying goods or services for being distinguished thereby from other¡¦s goods or services.¡¨ In this respect, the Enforcement Rule of the Trademark Law will make it clear that graph or character shall mean the trademark device sought registered should be presented by clear, definite, objective and easily understandable graph or character for causing the public to realize what the subject and scope intended to be sought for are.
Restoration Provision for Failing to Observe Payment Deadline of Registration Fees
Although Article 9(2) of the Trademark Law provides that ¡§an applicant failing to follow the statutory period due to force majeure or any other causes not attributable thereto may petition restoration before the trademark dedicated office within 30 days after extinction of the involved cause by stating in written the reason provided this shall not apply if the delay beyond the statutory period has been more than one year,¡¨ this provision is hardly applicable since under the current practices, it is extremely difficult for an applicant to find a reason to qualify as ¡¥force majeure or any other causes not attributable thereto.¡¦ Since it might be possible that not only the owner of a registered trademark has consumed much energy, time and money in seeking its registration or even exploited in the market, but also the trademark authority has invested substantial administrative resources in examination, it would violate the proportional principle if the trademark rights become forfeited simply because of unintentional delay in paying the registration fee. Accordingly, by referring to the spirit of the Singapore Trademark Law Treaty, a new restoration provision is added that ¡§an applicant failing to observe the registration fee payment period to result in an invalid allowing office action due to an unintentional may petition restoration the effect of the original allowing office action within 6 months after extinction of the involved cause by stating in written the reason provided this shall not apply if the delay has been more than one year or affect the rights bona fide secured by a third party.¡¨
Repeal Provisions of Paying Registration Fees in Two Installations
The provision for two-installment payment for the registration fees under Article 26 is to relieve the burden of the trademark owner in order to effectively utilize its trademark to cause it possible that a trademark having a shorter marketing cycle can be naturally phased out since it is not seldom found that a trademark has never been put into use for three years from registration or is not intended for further use. Nevertheless, since the low level of registration fees in the amount of NT$2,500, there does not exist an incentive for such policy. Since such policy is not compulsory, is not popular since enforcement, endangers the delay of paying the second installment, and encumbers the administrative burden and the provision under current Article 26(3) that ¡§the trademark rights will be extinct from the date following expiration of the period for double payment¡¨ violates the jurisprudence that the trademark rights shall be extinct from the date following expiration of the original payment period, Article 26 should be deleted.
Permissible Trademark Device Change due to Error or Company Organization Type Change If Trademark Identity Is Kept and Designated Goods or Services Remain the Same
Although the device and the designated goods or services should not be changed of a trademark once filed, if there are no permissible trademark device changes if the trademark identity is kept or the designated goods or services are not broadened and the rights of any third party are not adversely affected, not only the past examination resources become wasted but also there will be inconsistent between the information the trademark intends to convey and the actual use situation. Accordingly, if there is a clear clerical error, which has usually been allowed under the current practices, or the company organization type is changed, e.g. from an unlimited company into a limited company, new provisions have been provided to this effect.
New Provision for Nominative Fair Use
There are two categories of fair uses, i.e. descriptive and nominative ones, where the former one is referred to a third party using the trademark of a trademark owner to describe its own goods or services as provided under Article 30(1)(1) whereas the latter is referred to a third party using the trademark of a trademark owner to describe or indicate goods or services originating from the trademark owner. The latter is used to cause the content nature or property of goods or services of the third party known to the relevant consumers, is normally seen in comparative advertisement or maintenance service for showing, e.g. parts or components from the third party are compatible with goods of the trademark owner, and has been adopted by many countries, e.g. the European Community or the US. It thus should be enacted into law although already recognized in local practices.
Use Evidence of Cited Trademark in Dispute
As is known, the Trademark Law is to protect a trademark really put into use in the market since whether there will cause a potential confusion or mistake to the relevant consumers should be judged based on the existent trademarks in the market rather than registered trademarks in the registrar, which also explains why the Trademark Law has the provision of the revocation system by which a trademark having not been used for a certain period of time without due cause will be revoked in order that the trademark can be made freely available without the intervention by others through trademark registration. This further explains why in the trademark dispute, the use evidence plays a very important role. Since the current Trademark Law keeps silent in this respect, the proposed amendment, by referring to the UK Trademark Act, requires that if the cited trademark owner initiates the dispute and its cited trademark has been registered for more than 3 years, there must be a use evidence in order to overrule the registration of the trademark in issue.
Abolishment of Opposition System
Under the current law, the opposition is intended for public inspection and could be lodged by any body within three months from registration for examination by a single examiner whereas the cancellation proceedings can only be instituted by an interested party within 5 years from registration for examination by 3 examiners. Since the Trademark Office did not exercise a strict scrutiny as to who is qualified as an interested party, there is not much difference therebetween so that only the latter is kept for maintaining a deliberate system.
Although Japan and Germany still keep the opposition system, the grounds therefor are not identical to those of the cancellation proceedings. Through abolishment of the opposition system, proposed amendments will have provisions including:
1. The limitation for qualification as an interested party will apply only when the cancellation proceedings are instituted by a relative ground; and
2. For some grounds for cancellation where the legal relationship shall be decided at an earlier day, the time period for the cancellation proceedings shall be confined.
Discussions about Trademark Infringements
In the proposed amendments, each co-owner may on its own name petition in an action. An exclusive licensee may in the licensed scope enforce the trademark right as a trademark owner and petition on its own name in an action whereas the trademark owner shall not enforce any trademark right within the licensed scope unless otherwise provided in the contract. For a non-exclusive licensee may ask the trademark owner to petition through an action for any matter affecting its interests, and may petition in an action on its own name if it is refused by the trademark owner or the trademark owner takes no action after two months since asked.
It has been controversial whether a trademark infringement action needs a subjective intention or negligence requirement. Some might assert that the Trademark Law is the special law of the Civil Code so that where there is not a provision in the special law, the provision in the Civil Code having a subjective requirement shall apply. Whereas some take that there is an intentional omission in the Trademark Law in this respect since the trademark registration demands an announcement whose public notice effect has been enough to signify that the action taker has intention or negligence. Since the trademark infringement occurs not only to an identical trademark device designated to be used with the same goods or services, but also to a similar trademark device designated to be used with identical or similar goods or services, it is common that different persons would render different opinions. Accordingly, it is too strict to take that there is no need for the trademark infringement to have a subjective intention or negligence requirement. As a result, in the proposed amendments:
1. There is no requirement of subjective intention or negligence in precluding and preventing a trademark infringement;
2. There requires a subjective intention or negligence in the action taker for being responsible for infringement damages.
According to the IPO, under the current law, in an infringement action, it is not definite enough what kinds of concrete uses constitute a trademark infringement. The proposed amendments by referring to provisions in Article 10 of the UK Trademark Act, Article 14 of the German Trademark Act and Article 9 of the Community Trademark Regulation illustrate concrete use patterns in an infringement action as follows if one:
1. affixes a mark identical or similar to a registered trademark to label, packaging vessel, commercial document or advertisement medium to be potentially used with identical or similar goods or services;
2. sells, offers for sale or stocks the medium for those purposes;
3. imports or exports the medium in the first subparagraph.
Under Article 62(1) of the current Trademark Law, a trademark infringement is assumed only when the owner has demonstrated the distinctiveness or reputation of its famous trademark has been abated. The proposed amendment will cover a potential abatement.
A famous unregistered trademark is not protectible under the current Trademark Law but is to be protected under the Fair Trade Law. Since different laws have different purposes of legislation or requirements, there might be unbalanced punishments therebetween. Accordingly, the amendment includes protection for unregistered famous trademarks.
So far as the latter half of the current Article 62(1) of the Trademark Law that ¡§to have one of the following cases without consent of the trademark rights owner is assumed an infringement on the trademark rights¡K with an express knowledge of a famous trademark¡K using the word in said famous trademark as name of one¡¦s own company, trade name, domain name or other mark expressing business subject or origin, thereby abating distinctiveness or reputation of the famous trademark,¡¨ the amendments will cover the following:
1. The current subjective requirement of ¡¥express knowledge¡¦ could not be interpreted to cover ¡¥an intention to reap an unjust interest.¡¦ Accordingly, the phrase ¡¥express knowledge¡¦ is changed into ¡¥bad faith¡¦;
2. In order that the current phrase ¡¥other mark expressing business subject or origin¡¦ will not provide an overlapped protection for, e.g. the proposed protection for the unregistered famous trademark and not offer too much protection for the trademark rights to obstruct competition, it is deleted but with the inclusion of a group name;
3. The original provision did not include therein the situation of ¡¥causing confusion or mistake to the relevant consumer in respect of goods or service¡¦ in order to prevent someone from running a business having goods or services identical or similar to those of a registered famous trademark.
It is considered that without the restriction to a famous registered trademark, the current Article 62(2), ¡§with express knowledge of a registered trademark of other, using the word in said trademark as name of one¡¦s own company, trade name, domain name or other mark expressing business subject or origin, thereby causing the relevant consumer in respect of goods or service to confuse or mistake¡¨ provides too much protection so that it is proposed to be deleted.
Discussions about Certification Mark and Collective Mark
Article 72(1) provides that ¡§whoever desires to exclusively use a mark for certifying characteristic, qualify, precision, place of origin or other matters of other¡¦s goods or services shall apply for registration of a certification mark,¡¨ from which one might mistake that there is no requirement of a specific feature or nature in respect of ¡¥place of origin.¡¦ The proposed amendment deals with this issue.
As regards the place of origin, which has been put for protection under the certification mark under the current law, it is unclear whether it is eligible for protection under the collective mark, especially when there are more than two associations, institution or groups desiring to seek registered a mark of place of origin. The proposed amendments will make it clear that without the application of Article 23(1)(3), ¡¥being general mark or name of designated goods or service,¡¦ a collective mark owner has no rights to preclude others from expressing the place of origin of goods or services in business in good faith and reasonable use method and must accept the membership if applied by a manufacturer providing goods or services complying with conditions using the collective mark. By referring to the legislations in the US, UK and Australia, the restriction of the applicant of a collective mark to be a juristic person is lifted off.
Proposal for ¡¥Liability Limitation for Network Service Provider¡¦
The copyright property protection is seriously affected in view of the rampant network torts which are implemented and performed through the service platform provided by the network service provider. Accordingly, the IPO proposes the liability limitation for the network service provider for the copyright law in order to establish the ¡¥Notice/Takedown¡¦ mechanism between the right owner and the network service provider. Specifically, this proposal:
1. Enumerates the four categories, i.e. link services, rapid access services, information storage services and search tool services, of the networks service providers that could apply the liability limitation, and their requirements;
2. Clarifies the liabilities a network service provider shall assume if an illegal user utilizes its services to infringe copyright property and imposes obligations to the network service provider for preventing from continual damages;
3. Makes it clear that the network service provider can exempt from liabilities if it immediately automatically takedowns the infringing information once known to the infringement;
4. Makes it clear that the network service provider can exempt from liabilities if it immediately automatically takedowns the infringing contents or relevant information to bar the access thereto once notified by the copyright owner or its exclusive licensee.
Information of Cited References in Patent Gazette
In order to simplify the administrative flow and promote the idea of a green earth, full texts of cited patent documents will not be enclosed in principle in an official communication since through the popularization of the internet, it is easy for an applicant to download the cited patents in various countries. Nevertheless, for an individual applicant without appointing a patent agent, who might encounters difficulties in retrieving either the patent documents or non-patent documents, the IPO will keep providing the full texts therefor.
Since January 1, 2008, the patent gazette will publish the information of references that have been cited during patent examination for invention and design applications. According to the IPO, through such measure:
1. The prior art information during the patent examination quality becomes public and transparent so that the general public would better understand and trust the patent examination procedures;
2. The examiner will make a full search about the prior art and carefully judge the patentability of a patent application;
3. Such information could be used by the industry for grasping the involved techniques for reference in research and development and design around, analyzing the technical correlation and independence, and promoting the industrial interests by means of easing the efforts in patent deployment.