Deep & Far Newsletter
IP Developments in the Past 12 Months
In this issue, we would like to report developments in respect of IP-related matters in Taiwan during the timeframe of the past 12 months.
As a follow-up of the last issue in respect of the new enactment of Patent Attorney Act (PAA) from January 1, 2008, the test of the first time for the patent attorney was held on August 22 and 23, 2008. 1367 persons were prepared to attend the test but only 748 took all subjects in the test. The pass rate is 4.95% since only 37 persons passed the test. Since the easiness/difficulty of the technological subject significantly varies with the selected one a test receiver considered to be the one with which s/he is most familiar, there are various voices arguing the fairness of the test. Strictly speaking, under PAA, there is no patent attorney in Taiwan until late 2008 when there were the above-mentioned 37 persons and 47 persons of the first echelon who were converted from patent agents under the old law to patent attorneys by passing through a test for those who are qualified as test-free ones, i.e. those are really practicing the patent-related matters, after attending a class of 120 hours held by the IPO. In January, 2009, another 41 persons of the second echelon became patent attorneys. In the closing ceremony of each training class, some trainees felt benefited or educated a lot, which might explain how terrible the old patent agent system is. Certainly, for a few persons who are really mastering the patent law and practices, it is burdensome and dull to attend the class.
In order to train the future patent attorneys who pass the patent attorney test held by the highest examination authority, Examination Yuan in the government, there is enacted Patent Attorney Pre-Service Training Rule, in which it is provided that the training program includes a training course of 57 hours and a test of 3 hours. The grade is composed of report of group discussions (50%), test (40%) and normal assessment (10%).
With the operation of the IP Court from July 1, 2008, it was anticipated there will be 3,000 IP cases per year to be instituted therebefore. The reality, however, did not so show. For the year of 2008, the IP court received fewer than 120 cases per month in average. With IP Case Trial Act becoming effective as of July 1, 2008, it was anticipated that the normal courts trying the IP-related cases will ask the helps of the technical officer in the IP Court. Nevertheless, it turns out to be that the normal courts, if not preferring trying the case by themselves rather than by seeking expert assistance from the IP Court, would stay the case until the invalidation of a patent has been decided by the Intellectual Property Office (IPO), as opposed to the provision in the IP Case Trial Act that the judge shall decide by herself/himself as to whether the patent in issue shall be void and null ab initio.
Claim Amendments After Grant
Claim amendments after grant are strictly limited under Taiwan patent practices. This is necessitated and reasonable in order to protect the interests of the general public since any interested party could only know what kind of claim scope a patent has from the published specification, in order to stay away from the claimed protecting scope on the one hand. On the other hand, it is logic to assume that an applicant has duly deliberated what kind of claims or claim scope it would like to have or strive for during the prosecution of the patent application. To this effect, Article 64(1)1 of the Patent Law limits the amendments to three situations, i.e. reduction of claims, correction of clerical error and illustration of unclear statement. In addition, it is evident that an applicant shall not reap a protecting scope beyond what have been described in the specification. Accordingly, it must be reasonable for us to realize that amendments to the claims shall find enough bases in the specification. It would therefore appear to be a natural conclusion that Article 64(2) provides “The amendment in the preceding paragraph may not be made beyond the scope disclosed by original specification or drawing upon filing, and may not expand in substance or change the claim.” The potential question in this paragraph might be what is meant by the phrase ‘expand in substance or change the claim,’ in which the former half ‘expand in substance’ shall not subject to any challenge but the latter half ‘change the claim’ might raise a lot of troubles in construction
For example, under current Taiwan patent practices, the phrase ‘may not change the claim’ is interpreted to merely include the situation that a dependent claim is incorporated into the independent claim. We are not satisfied with such practices.
1 Article 64 of ROC Patent Law provides that “An invention patentee may petition to amend patent specification or drawing only in any of the following circumstances:
1. Reduction of claim;
2. Correction of erroneous matter;
3. Illustration of unclear statement.
The amendment in the preceding
paragraph may not be made beyond the scope disclosed by original
specification or drawing upon filing, and may not expand in substance or
change the claim.
The straightforward reasons are as follows:
1. The included situation is a kind of claim change;
2. Any of situations as allowed by Article 64(1) of the Patent Law is a kind of claim change;
3. If either of the above two items is legal, there must be other situations that are legally acceptable.
It appears that protecting the respective interests of the patentee and that of the general public are diametrically opposite core considerations of this issue, what permissible amendments after grant are. Accordingly, any resolution for this issue must put these two opposite considerations into consideration. Specifically, such resolution must have avenues respectively directed to protect rights for and reflect the needs from both the patentee and the general public. Protecting rights for either party means the reliance on the published claim scope for the general public and/or the rights to secure and retain patent rights on a really patentable invention for the patentee. Reflecting the needs for either party possibly means the freedom to conduct a business relating to the published patent by any a party from the general public and/or the rights for the patentee to substantially change the published claimed scope without changing or going beyond the substantive contents of the original disclosure in order to distinguish its invention over a newly located prior art for securing patent rights of a really patentable invention, whose claim scope, however, was unduly broad during the prosecution stage since no party is able to then locate the later located prior art.
This simple issue might involve a lot of questions as exemplarily identified above. Before we analyze this issue any further, we would like to introduce some more local practices currently effective as follows:
1. Anything which could be straightforwardly and unambiguously derived from the original disclosure could serve as the contents for correction as expressly provided in the Guidelines for Patent Examination (GPE, Part II, Chapter 6, Sec. 1.3).
2. Reduction of claims is construed to include only the situation where the dependent claim is incorporated into the independent claim. Accordingly, incorporating a feature not in the original claim but in the original disclosure into an independent claim is impermissible although in GPE, Part II, Chapter 6, Sec. 2.4, a ‘change in substance the claim scope’ is defined as a wording replacement of a contrary meaning, a technical feature changed to have a different substantive meaning, or a changed subject matter, industrial technical field or problem to be solved.
3. GPE states that introducing a technical feature not covered in the claim but in the original disclosure into an allowed claim to form a new claim will result in changing in substance the claims since the combination relationship among original components, elements or steps and the nature or function of the published invention after grant will be changed even though such introduction is a limitation through the addition of a condition. In this connection, we have the following comments:
A. TIPO has strictly interpreted the phrase ‘not covered in the claim’ since introducing a limitation is normally narrowing the claim, as perceived by TIPO. Since this must be true, it would be puzzling why TIPO could take it ‘not covered in the claim.’
B. If ‘not covered in the claim’ is to be interpreted as ‘a matter not already recited in the claims,’ it would be unreasonable or irrational since the introduction of ‘a matter not already recited in the claims’ but disclosed in the original disclosure could never result in changing in substance the claims.
C. It is also funny for TIPO to assert that the combination relationship among original components, elements or steps and the nature or function of the invention will be changed even though merely a limitation is introduced into the claim, since an introduced further limitation might impart patentability for an invention in view of a newly found prior art without changing in substance anything in the spirit or the nature of the invention.
D. It is accordingly similarly funny for TIPO to take that the introduction of a further limitation into a claim must result in changing in substance the claim.
E. By the same token, taking that introducing a technical feature not covered in the claim but in the original disclosure into an allowed claim to form a new claim will result in change in substance the claim or its scope is likely funny.
4. It might sound incredible that GPE further states that introducing a technical feature not covered in the claim but in the original disclosure into an allowed claim or to forming a new claim will result in broadening in substance the original claim scope. The rationale for such statement might be that anything additional to the original claims will add something to the original scope to be thus broadening. Such statement is baseless in that:
A. As realized by GPE, anything which could be straightforwardly and unambiguously derived from the original disclosure could serve as the contents for correction. Since this realization never causes problems or issues in the prosecution stage, whether or not such correction shall be excluded for application in a post-grant procedure shall not be regarded as having been expressly provided;
B. It is not a truth to take that introducing a technical feature not covered in the claim but in the original disclosure into an allowed claim or to forming a new claim will result in broadening in substance the original claim scope since, as a matter of fact, or as perceived in GPE, introducing a technical feature will shrink or narrow down the claim scope, and every reasonable person must believe a shrunk claim scope must be smaller rather than larger or broader than the original claim scope;
C. What is added through the introduction of a further limitation into a claim does not add, gain or broaden anything for the claim but narrows down its claim scope. Although the introduced addition itself might not appear in the original claims, its contents or reality must have been duly covered under the original claim scope. Accordingly, the introduced addition does not add or change anything to the metes and bounds of the original claim scope but at the utmost better clarify what the claim scope is. Therefore, as long as the introduced additional limitation has been disclosed in the original disclosure, a better clarification could never be equal to a new matter and does not add anything alien to the original disclosure;
D. Accordingly, it might be easily imaginable that taking that introducing anything additional to the original claims will add something to the original scope would easily deprive the rights of the applicant in some circumstances.
5. After getting known to the severe practices as laid down by GPE, the same GPE exemplifies in Part II, Page 2-6-65 what reduction of claims means that it is acceptable to replace a claimed technical feature, e.g. a liquid crystal display of a generic concept into one shown in the disclosure, e.g. a liquid crystal monitor of a specific concept. We could thus know that GPE does not adopt the same standards for determining whether a specific situation belongs to a reduction of claim.
6. What is more, GPE forbids a technical feature in the disclosure to be corrected into the claim in Part II, Chapter 6, Sec. 2.7, Examples 2 and 3 while allowing in Example 5 to replace a plasma display of a specific concept in the claim with a planar display of a generic concept in the descriptions.
A patent attorney or a patentee will encounter a tough deal if, e.g. there is a case (not seldom found) having the following facts 1) an application has matured into a patent, 2) the patentee is suing an infringer based on the allowed claims, 3) the infringer has located a prior art capable of affecting the patentability of the patent, 4) the patent needs be further limited in order to survive over the prior art, 5) the limiting feature is not originally recited in any of the claims, and 6) the limiting feature is disclosed in the descriptions or is a property of the invention but not recited in the claims. In such case, what TIPO holds or GPE states are questionable and appear to damage the personal constitutional rights in that:
1. The limiting feature is explicitly or implicitly (or inherently) a part of the invention and is certainly contained in the application;
2. Since the limiting feature could be subject to be put in the original recitation in order to serve as a competent element in the initially allowed claims for being protected, it shall not be excluded as a base for a later claim amendment simply because the limiting feature is not originally recited in the claim, especially when the limiting feature is really not so important not only in the knowledge of the inventor but also in view of the cited references located by the examiner;
3. The fact that the limiting feature becomes very important only after the prior art newly found by the accused infringer is not necessitated to be the fault of the applicant since the Patent Office has fault also to fail in locating all relevant prior art while examining. Accordingly, it would be improper to attribute all disadvantages to the applicant while the Patent Office has a fault and the applicant is to be blamed because of its failure to know there does exist such a prior art in the world;
4. There still is a situation that the limiting feature is not a real element but is a connection relationship among physical elements, by which relationship the invention could be distinguished over the newly found prior art where the patentee does not want to illegally enjoy any additional rights but only cannot but desire to clarify what its invention is over the new prior art in order to secure what it certainly deserves to reap after its all kinds of efforts in maturing its patent;
5. Without an intentional or negligent fault, it is believed that the patentee shall not be deprived of any statutory rights, which not only are merely formally defective but substantively patentable in view of either the officially found cited references or the newly located prior art, but eligibly and competently subject to protection under the statutory law after amendment in view of the new prior art. Speaking otherwise, under the jurisprudence, any law will never reprimand a person or deprive her/him of any rights simply because of an accident or a force majeure, which best describes the tough deal above-described.
Despite of the above irregularities and unfounded statements, it is interesting to note that GPE provides in Part II, Chapter 6, Sec. 2.31, Point (7) (Page 2-6-65 that if the claim recitation is directed to the technical feature of a sequential series of operations or processing steps, an introduction of another technical feature into the claim belong to a reduction of claim). If this is true, we would have no troubles here since if introducing another operation or processing step is not a problem, we could not figure out how introducing a description-disclosed but not claim-recited technical feature into the allowed claim, not to mention a tough deal as the above-mentioned, could have different scenarios from this GPE provision or could in any way present any issue we are discussing now. If this is inapplicable, why is it put in the express statement in GPE? How does TIPO plan to solve this discrepancy? In this connection, it might appear sound to assert that anything which could be directly and unambiguously derived from the descriptions in either the descriptions or drawings by one skilled in the art could be introduced into the amended claims after grant without causing any concern of going beyond the original disclosure, as mentioned in GPE, Part II, Chapter 6, Sec. 2.3 applying mutatis mutandis the provisions in Sec. 1.3 of the same Chapter.
It is very encouraging and highly interesting to note a finding by the Supreme Administrative Court in the reasoning Paragraph 7(3) of its 94 Pun No. 01276 Decision that “what have neither been disclosed in the paragraphs of ‘creation objects’ and ‘creation effects’ in the patent specification, nor are not relevant to an effect obtainable from the ‘technical contents or features,’ (i.e. an effect not provable based on the technical features) could not serve as bases for awarding ‘non-obviousness’.” This inventive reasoning reveals that a non-obviousness of an application could be established either by what have been disclosed in the paragraphs of ‘creation objects’ and ‘creation effects’ in the patent specification, or by an effect obtainable from the ‘technical contents or features. This decision is smart enough to point out a patentee deserves to be entitled to enjoy all what its application has explicitly, inherently and implicitly disclosed in the specification, and presents an atmosphere to respect the efforts and the rights in relation to the patent sector under jurisprudence in the human society.
A rejection on introducing a description-disclosed but not claim-recited technical feature into the allowed claim needs not be a must even under the stipulations of TIPO because GPE, Part II, Chapter 3, Point 3 (Page 2-3-6) clearly provides that “even though a utility model recited in its claim does not correspond to the purpose or effect described in the specification or drawings, the subject matter subject to examination shall not be limited to the purpose or effect described in the specification based on which one is to determine what is recited in the claims is the utility model.” This provision makes the following clear:
1. Normally, a utility model recited in its claim would correspond to what are described in the specification. If not, it needs not be fatal;
2. Since what is important is what is recited in the claims is the correct utility model, the purpose or effect described in the specification is significant but not controlling. Accordingly, the fact that what the claims recite in a utility model application do not correspond to the purpose or effect described in the specification or drawings is not that critical. That is, such situation could not incur a fatal effect to the application as long as what the claims recite present a creation realizable by one skilled in the art and supported by the specification. Further, the subject matter subject to examination shall encompass all purposes and effects it would inherently present but not be limited to the purpose or effect described in the specification. Specifically, the purpose or effect described in the specification is merely illustrative or exemplary rather than exhaustive so that it could not be based for determining what is really recited in the claims as the utility model involved in;
3. Since a patent application is not different from a utility model here in Taiwan except the patent duration, by the same token, it is reasonable for us to believe that the above analyses are applicable to a patent application.
Having discussed and gone thus far, we would like to conclude this topic as follows:
1. From an equitable point of view, post-grant correction is not prohibitive, as currently is the case. The issue to be concerned should be what kinds of corrections are acceptable and unacceptable, as currently the laws appear to be;
2. The provisions under the current law might be sound or not good enough. If yes, there exist issues as to how we should construe the provisions, while if not, there exist issues as to how we should revise or interpret the provisions;
3. Introducing a limitation into a claim to form a limited claim normally inevitably causes the limited claim to be covered by the original claim either formally or substantively;
4. Except the limitation or feature is not initially disclosed in the original disclosure, either explicitly or implicitly, allowing the introduction of the limitation into the claim in order to retain the patent rights rather than to cause the patent invalidated since if it is not the fault of any body, why shall the patentee itself suffer the deprivation of its rights? If we are to blame any body, why needs the Patent Office failing to locate the pertinent prior art by the prosecution of the patent application in order that the patentee could timely revise its claim scope not be blamed? Further, why shouldn’t the invalidation petitioner petitioning the invalidation proceedings help the Patent Office correctly examine the patent application by trying to locate the potential prior art for submission with the Patent Office or to provide therewith reasons and briefs as to how and why the involved patent application shall not be patentable in view of what kinds of cited references after the earlier publication of the patent application and before the substantive examination thereof, and be blamed?
5. Except the limitation or feature is not initially disclosed in the original disclosure, either explicitly or implicitly, introducing the limitation into the claim at any time during the life of the patent should be allowed since this is not only just a rational adjustment as to what should be the correct version the patentee deserves to lawfully enjoy, but also a wonderful remedy for pursuing a real justice in the patent sector in that only the claim scope after adjustment is the real scope that would reflect what the patentee should enjoy;
6. The above advocacy would sound especially true and reasonable since the general public will not lose anything if the law is to allow the introduction of the limitation since the public is originally excluded from a larger scope but would now be in turn excluded from a relatively smaller scope after limitation. Since allowing the claim limitation will not cause any damages to the public but would affirm the excluded scope becoming smaller, why and how could anybody or anything including the legal jurisprudence claim that allowing the limitation introduction would harm any kind of justice under the sun?
7. On the contrary, if allowing the limitation introduction would cause no harm to anybody or anything subject to statutory or constitutional protection but disallowing such limitation introduction would deprive the substantive rights of the patentee, what is the rationale for us or the law to so exercise?
8. The only sustainable argument might be that the allowed claim introduced with the new limitation is hardly foreseeable from the allowed original claims so that the limited claim shall not come to the society as a surprise. This might not be convincing in that the general public has fully seen that the patentee would enjoy within the original patent term with an exclusive right as to what is claimed in the allowed claim. If this is true and persuasive, how could it be true that the general public would be surprised by the replacement of a statutorily allowed claim by another new claim introducing thereinto a limitation to have a smaller scope?
9. The last argument might be that the general public would have been free to use the patent if the above limitation introduction is disallowed. This shall not be an argument since the general public need not be trying to be benefited through inappropriately depriving the rights of a person. Instead, the general public would be benefited through properly respecting what a patentee shall deserve to enjoy, as what any patent law in the world is contemplated to be enacted, e.g. encouraging the creation by inventors in order to gain welfare for the society;
10. Accordingly, we are of the opinion that revising the claim scope in view of the prior art is the natural or constitutional rights of the patentee either before or after the grant of the application. If the rights for the general public are to be cared about, the provisions under the reissue system in the US might be a sound basis for reference.
Clothes and Footware
IPO announced that the subgroups of clothes and footware will be regarded as similar goods for the purposes of prior mark search so that upon examination, a cross subgroup search will be conducted. Accordingly, if there is an identical or similar trademark in one of the subgroups, a trademark application in the other of the subgroups is likely judged to be confusing. By this announcement intended to conform to the general recognition of the relevant consumers and the trade transaction reality, IPO hopes to prevent the trademark registrant from investment losses due to the fact that a registered trademark is later cancelled in the dispute proceedings, in view of the gist of decisions rendered in the appeal case No. 3500 made by Taipei High Administrative Court in 2007, in the summary judgment No. 1007 made by Taipei District Court in 2007 and in the summary judgment No. 460 made by Taipei Shih-Lin District Court in 2004, and of the finding that the wearing custom, usage, function, manufacturer, marketing channel and selling spots of these two kinds of goods are domestically identical or interrelated.
Examination Guidelines on Trademark Distinctiveness
Distinctiveness is the positive requirement for registering a trademark but its existence or strength changes with the actual use condition and time. Since bearing distinctiveness or not belongs to a factual judgment, inconsistency on examination could sometimes be found to have different judgments owing to the variation of the nature of goods or services. Especially for the criteria in judging whether there is an acquired distinctiveness through use, which varies with the strength of the use evidence, the extent required to be used in the same field and the accessible extent of the consumers to the relevant goods or services, Guidelines are thus provided for anticipating a consistent judgment based on objective standards.
The judgment for distinctiveness must be based on the relation between the trademark and the designated goods or services so that it is inappropriate to make judgment without considering the designated goods or services. If a mark is not a description required to denote goods or services themselves or the quality, function or other characteristic thereof, in the course of transaction by other competitors having a good will, it is inherently distinctiveness. As is known, such inherently distinctive trademarks could be categorized into creative trademarks, optional trademarks and suggestive trademarks according to the strength of their distinctiveness. Although optional ones take use of the existent vocabulary or matter, they are irrelevant to a description of the goods or services. A suggestive description is different from a direct description in that the former involves some extent of imagination, thought, perception or reasoning before one could conclude the relevancy between a mark and the goods or services. Although it is very clear that the suggestive mark is inherently distinctive while a descriptive mark is not so as to be non-registrable unless having an acquired distinctiveness so that their distinction has important legal significance, the direct description cannot easily be distinguished from the suggestive description where the key judgments reside in whether it is fair to other competitors if the mark is registered without the necessity of proving there has been an acquired distinctiveness. Main considerations in making judgments include:
1. The extent a consumer needs to exercise its imagination: It needs no imagination or thought to determine it is a direct description for a descriptive mark while a suggestive mark needs more imagination or thoughts to realize the relevancy between the mark and its goods or services;
2. The definition on a dictionary;
3. The use in newspapers, magazines or networks, although reasonable care must be paid to the correctness or objectiveness of the network information since the network is a free environment for the public use;
4. The extent possibly required to be used by the competitors:
In addition to the generic term or mark, those having no inherent distinctiveness include (non-stylized) single letter, model number, pure digits, simple line or basic geometric graph, decorative pattern, surname, combination or title and surname, company name, domain name, common religious god, term or mark, slogan, common compliments, auspicious words, or popular words or idioms because of having no function of identifying the origin recognizable by the consumer.
The acquired distinctiveness is also as the secondary meaning where the word secondary does not mean less important or subordinate but represents the appearing meaning comes after the original meaning.
Whether a trademark bears distinctiveness depends on the individual facts and evidences. The related factors include:
1. The relation between the trademark and the designated goods or services, i.e. whether the mark transmits the information relevant to goods or services to some extent;
2. The use situation by competitors: It is to be noted that even if a vocabulary or matter has been used by the competitors, it is still of no distinctiveness as long as the consumer can understand the gereral direct meaning;
3. The way the applicant is using and the actual transaction conditions. It is interested to note that Guidelines raises here an example irrelevant for explainging what this factor means so that what this factor means remains open.
Whether a trademark has distinctiveness should be judged by the relevant consumer of this country. By relevant consumer is meant to include those having bought or used specific goods or services and the potential consumers who will buy or use the goods or services in the future. The more expensive the goods or services are involved in, the more attention the consumers will exercise in recognizing a trademark. Homophonic words might be registered if it is not really descriptive, but are not registrable if belonging to a dialectal description or a literal description of a foreign language.
Decorative patterns are not registrable if considered as a general design or pattern by the general consumer. Although a shape of the goods or an important feature thereof could not have either an inherent or an acquired distinctiveness, we have successfully sought registered a newly creative 3-D shape of bottle for the first time in this country. Certainly, any a specially designed word, shape or mark having imparted an image or meaning not directly related to what it might have been assuming might be registrable. Also, if a name of a place cannot be found any relation or association to the designated goods or services, the name would be an optional use of a geographical name to have distinctiveness. An old geographical name still well-known to people to have a new name is unregistrable while a rarely known geographical name is distinctive. The combination of a geographical name and an optional term might deviate from the geographical meaning to be distinctive. Such combination could be, e.g. Paris Boys according to Guidelines. Such judgment also applies to surname. Nevertheless, a full name of a person, especially the signature thereof, as long as it is not the one relating to name, pen name, alias or the like of others is registrable in theory. A portrait of any other, unless having been dead, could not be registered unless consented.
According to Article 23(1)(12) of the Trademark Law, anything “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” is unregistrable. According to Guidelines, a famous ancient or old book or a fictitious figure, such as one in a best-selling book, film, TV or stage is applicable under this provision. We are, however, confused by Guidelines since what is explicit in the article is ‘identical or similar to another person’s famous trademark or mark but here there is inexistent any ‘another person’s famous trademark or mark.’ If found proper for rejection in such situation, Article 23(1)(11) “likely leading the public to mistake or misconceive nature, quality or place of origin of its goods or service” might be more appropriate. Certainly, Guidelines might be correct if what is involved in is a popular current book. Also, Guidelines caution that the title of a work might not be related to the use of a mark.
Although Guidelines reserve that if a domain name is so clearly shown in a website as to enable others to recognize that the plain domain name denotes the source of origin, there is no plain (i.e. non-stylized) domain name having been allowed till now.
Unless a slogan is highly creative, it is registrable only until there already has been an acquired distinctiveness. Although a slogan containing a distinctive word mark might have distinctiveness, it still is indistinctive if it, as a whole, still is a description of goods or services. According to Guidelines, however, a non-descriptive slogan purely for publicity could not identify the source of origin of goods or services. Nevertheless, the slogan “不在辦公室 也能辦公事” (doing official matters even not in office) designated to be used in mobile communication, telecommunication or telecommunication link is registrable.
In theory, whether there already is an acquired distinctiveness shall be judged from the viewpoints of the domestic consumers. Relevant factors are as follows:
1. How or how long a mark has been used and how the mark is used in the same field: Specifically, if the mark in actual use is not deviated from the identicalness of a mark to be sought registered, the actual use evidence is competent. Although the mark in issue could have been used with other mark(s), the applicant needs to prove that the mark in issue is really used as a mark rather than merely a goods description. The longer or more extensive the mark is used, the more possible or quicker the distinctiveness could be acquired. If there is an interrupted use period, whether such interruption will affect the judgment there will be an acquired distinctiveness should be considered;
2. Sell volume, revenue and market share: Generally, the more sell volume or revenue, the more possible there is an acquired distinctiveness. In considering the revenue, the goods characteristic should be considered. Specifically, the cheaper the goods is, the less distinctive the mark in issue is since the consumer will pay less attention to that mark. That is to say, the more expensive the goods is, the more distinctive the mark might acquire. It would be improper to judge merely by the revenue in the banking related industry since the account number, the branch number, how the branches are distributed and how many people are insured are more appropriate for judgment. Certainly, the market share might be the most important one in this factor;
3. Advertisement quantity, AD expenses and data of promoting activity: The coverage on which the advertisement is embodied would be a factor for considering the advertisement. For some industries, e.g. the one manufacturing highly specialized products, their advertisement is unimportant since they only notify the current or potential clients through letter, email or catalogue;
4. Selling area, market distribution, selling spots and display or exhibiting places: As the same with the above item, for a specilized industry, the limited geographical coverage shall not be an unfavorable factor;
5. How many registration certificates have been obtained: It is to be noted that if foreign certifcates are obtained through acquired distinctiveness, the reference value will be less;
6. Market investigation report: The following issues shall be carefully dealt with:
A. How specialized and fair the investigator is;
B. How the investigation is conducted: For example, the report shall denote where, when, how, where, who, what kinds of sampling methods or pupulations and how many samples the investigation is conducted. The more representative for a population the sampling method is, the more reference value the report will be;
C. How the questionaire is designed;
D. The relevancy between the contents and the results of the report; and
E. Others, e.g. the basic information for those been investigated. Further, the statistics error and confidence intervals should be state.
7. Other evidence for imparting acquired distinctiveness, including e.g. whether the mark in issue is seen in the plane media and a proof originating from an association.
If a trademark is registered through acquired distinctiveness, it will be announced in the Trademark Gazette.
Proposed Copyright Act Amendments
The use opportunity of works increases with the development of the network technology. In contrast, infringements easily occur due to the convenience of copy and transmission and have a nature of being widely spread and having a huge magnitude so that the rights of copyright are seriously endangered since it is hard to sue all of the myriad infringing network users. For the network service provisions industry, its development will be somehow obstructed if network service providers always run the risk of being sued since the infringement is normally made possible through their intermediacy. A liability safe harbor provision by which the right owners could notify the service providers to remove the circulating infringing materials and the service providers could exempt from liabilities if statutory processes are followed would thus be beneficial for the social development.
Network service providers are defined to include link service providers, fast storage service providers, information storage service providers and search service providers. Although the notice & takedown mechanism might drive the network service provider into the liability safe harbor, it is to be noted that it is not imperative that the network service provider must have liability if no takedown has been performed. For a network service provider to enjoy liability exemption, the proposed Article 90quinquies of Copyright Act, through reference to 17USC512(i), makes it clear to comply with the following provisions:
1. Notifying the user its copyright policy by contract or otherwise stating it will terminate agreement for all of part of services it provides if there are multiple infringing situations. Alternatively, it is appropriate if it provides an automatic or semi-automatic technique for detecting or filtering contents infringing a copyright;
2. Adopting concrete measures for implementing the above copyright protection policy. Concrete measures could be that there is a dedicated person in the service provider for dealing with complaints for copyright infringement matters, that it stops or terminates all or part of its relevant services upon knowing there is a potential infringement, or that the service provider transfer by email to the user the notification from the copyright owner that there is an infringement;
3. Announcing the relevant information of its contact window;
4. Performing the general technical measures (for identification or protection) provided by the copyright owner for protecting its copyright unless there will be an unreasonable burden therefor (like those as defined in 17USC512(i)(2)(C)). By the adjective “general”, it means the measures are adopted under consensus of both parties
Other proposed new enactments include provisions respectively briefly and roughly corresponding to 17USC512(a) ‘Transitory Digital Network Communication’, (b) ‘System Caching’, (c) ‘Information Resides on System or Network at Discretion of Users’, and (d) ‘Information Location Tools.’ In addition, other proposed amendments include inter alia the following:
1. The information storage service provider shall notify the potential infringing user of the details as to how it remove or cause others incapable of accessing the possible infringing contents unless the notification is impossible in view of the nature of the provided service;
2. The informed user could provide a counter notification stating there is no infringement and requesting the service provider to restore or cause others to access the actually not infringing contents again;
3. The service provider shall transfer the above counter notification to the copyright owner immediately. If the copyright owner submits to the service provider in 10 working days the proof of lodging a suit upon receipt of the counter notification, the service provider shall not follow the request of the informed user. If there is no such proof from the copyright owner, the service provider shall follow the request from the informed user at latest in 14 working days after receipt of the counter notification. If non-restorable, the service provider shall notify the informed user in advance or otherwise restore therefor;
4. The informed user or the copyright owner shall be liable for damages of the service provider resulting therefrom if the notification or counter notification is made without a proper right or cause.
The act will provide an article to govern acts of the re-broadcast of ‘public broadcast’ in Article 3(1)(7) of the Copyright Act and ‘public performance’ in Article 3(1)(9) (hereinafter collectively referred to as ‘secondary public broadcast’). For such acts, they normally receive the original broadcast through radio wave or cable for the purposes of broadcasting the public through a broadcasting system or a loudspeaker. Such acts are very popular in various places, e.g. hotels, hospitals, restaurants, coffee shops, department stores, malls, convenient stores, buses and have a nature that the users could not know in advance what kinds of works they might make use of. Under the current licensing practices, these works could subject to management under either the collective managing party, or an individual or an appointee. It would be unreasonably and ineffectively exhaustive and costly if the user is required to negotiate a license with all copyright owners one by one, which will inevitably harm the eventual interests of the copyright owners since if not giving up the use, the user probably will still make use thereof in violation of the law. Accordingly, with reference to Article 11ter(2) of Berne Convention, Article 20(b) of German Copyright Act, Article 22(1) of Swiss Copyright Act and Article 9(1) of Council Directive 93/83/EEC that ‘member states shall ensure that the right of copyright owners and holders or related rights to grant or refuse authorization to a cable operator for cable retransmission may be exercised only through a collecting society’, the new article provides that the rights for secondary public broadcast could only be exercised through the collective society.
The original or first time broadcast through radio or TV is the most upstream source in the supply chain for channels from which the public obtains any kind of information and normally needs to use huge number works of others. Nevertheless, they are few copyright owners who decline to join in the collective society but demand unreasonable compensation for license through relying on the criminal penalty provided in the Copyright Act, which apparently will adversely affect the development of the relevant industries and result in an interest unbalance between the right owner and the user. Accordingly, a mechanism for resolving the dispute about the licensing agreement unreachable therebetween is provided in another article. The same thought applies to the situation when the original broadcast is made through the network system. Accordingly, this article is to be stipulated with reference to Article 11ter(1) and (2) of the Berne Convention and Article 68(1) of Japanese Copyright Act. In order to prevent such license grant from being abused, a mediation shall proceed in advance. In addition, such license grant shall be accompanied by a reasonable compensation.
It might be interesting to know how much it costs for such re-broadcasting act through an exemplary collecting society, i.e. Recording Copyright & Publications Administrative Society of Chinese Taipei (RPAT). Recently, RPAT proposes that for a re-broadcasting act in a hotel or hospital, the annual fee would be NT$2,000 if the involved music-broadcasting public area is not more than 30 Pings (1 Ping=3.3058 m2), and would escalate NT$40 for each additional ping. For each room in the hotel or hospital, the annual fee is NT$50. Although this sum does not appear significant, the hotel runners complain a lot since in fact, each room needs pay several thousands. This is because there are so many collecting societies including inter alia those for music, recording and video works. Before these societies could be really unified into a single collecting society, it is inappropriate to collect any new fee. These hotel runners add that the amount of works RPAT manages and the size RPAT is might well less than one hundredth of those The Association of Recording Copyright Owners (ARCO) manages and is. In addition, ARCO is a member of IFPI (International Federation of the Phonographic Industry) and acts on behalf of 1,400 IFPI members all over the world while RPAT is not. Furthermore, it is funny for RPAT to so propose their fee schedule since what ARCO collects is that the annual fee is NT$480 for an area not larger than 120 Pings and escalates NT$60 for every additional 15 ping.
While the opinions from the hotel runners are overwhelming, RPAT responds as follows:
1. A single collecting window is always the goal of its efforts;
2. A copyright naturally has the rights to collect royalty. Accordingly, whether the royalty should be paid is independent of whether a single collecting society has been established or whether the proposed fee has been reviewed by IPO;
3. Although the recording works it manages are less than those of ARCO, the used frequency of its managed works is never less than that of those managed by ARCO;
4. The quoted fee schedule of ARCO is wrong. According to the fee schedule from the website of ARCO, the correct corresponding one should be “for a music-broadcasting public area not more than 30 Pings, the annual fee would be NT$2,000 and would escalate NT$60 for each additional ping. For each room in the hotel or hospital, the annual fee is NT$50”;
5. For fee compensation in respect of radio TV, RPAT and ARCO both collect 0.063% of the advertisement revenue while for that in respect of cable TV, ARCO collects from more than NT$200,000 to more than NT$800,000 but RPAT fixes the collecting compensation at NT$500,000. It would thus be known that the compensation of RPAT does not have a big difference from that of ARCO.
In industrial and commercial society nowadays, using works, e.g. music, audio or video works, pop songs and films, of others in various activities is very popular. Such activities could be categorized as profit-making and non-profit with the latter ones related to public interests. In order to harmonize the copyright and the public interests, there is provided a mechanism by Article 55 of the Copyright Act that “the work of another person that has been publicly released may be publicly recited, publicly broadcast, publicly presented, or publicly performed in the course of an activity of non-profit nature, provided that no fee is directly or indirectly collected from the viewers or listeners, and no compensation is given to the performers.” Such kind of use requires no license or consent from the copyright owner. Specifically:
1. Non-profit feature: It includes not only an economic interest readily realizable but also that convertible into an intangible or delayed occurring one, e.g. an activity promoting an enterprise image or being a combination of commercial purpose and public interests. For example, the background music played in a product show is not of a non-profit nature although none of the attendees and guests will be collected a fee and the performer is not paid a compensation because it is played by a CD, since the product show is held for the purpose of reaping an economic interest.
2. By “no fee is directly or indirectly collected from the viewers or listeners,” it is meant that no fees of entry, membership, cleaning, service, beverage/food, appliance, or anything directly or indirectly related to using the work. For example, a coupon cut from a newspaper for serving as the entry ticket will be interpreted as collecting a fee since the newspaper needs be bought in advance.
3. The compensation in the clause “no compensation is given to the performers” is likely to include salary, wage, perquisite, bonus or working premium (not a lottery prize as long as it could be interpreted as a compensation for the performers. Accordingly, if the transportation fees for the performers are far more than it is really required, it could be a compensation. If, however, it never is a consideration, e.g. winning a prize, it should not be a compensation.
4. The work of another person must have ever been publicly released, which means that contents of the work have been published, broadcast, opened, dictated, performed, exhibited or otherwise disclosed.
5. It must be a specific non-routine activity. A regularly held activity exemplified in the following will not qualify as fair use:
I. Play a personally purchased CD during the break time or the off-duty time of an office;
II. Provide a computer karaoke machine in a public agency, a society or a community for entertainment of employees or members;
III. Play the music in the break time of a school.
Accordingly, for example, in a year-end party, if a player is invited to perform for compensation, it will not be a fair use. On the contrary, in the same party, if employees act as singers for entertainment, it would qualify as fair use. By the same token, in a festival, a personally purchased CD loaded with a movie could be lawfully played if no fee is to be collected from the viewers. Furthermore, if such a party is held in a hotel having obtained an overall license from the copyright owners, no such consideration needs to be made. If, however, the hotel does not have obtained an overall license, the judging standards return to what have been above-stated, since a hotel or restaurant will make no difference.
Article 47(4) of the Copyright Act provides that “in the circumstances set forth in the preceding three paragraphs the exploiter of the work shall notify the economic rights holder and pay compensation for use. The level of compensation shall be set by the competent authority.” The IPO recently has the following initial researched opinions. Specifically, as regards to whether it is proper for the use compensation to be collected as the publication royalty is or the use compensation shall be fully collected at one time. It is commonly considered by the right owners, users and IPO that the present practice to collect at one time is dispute-freer. With regard to whether the use compensation for words or textbook should be adjusted or how much it should be adjusted, IPO takes NTD (New Taiwan Dollar) 1,000 are reasonable for every 1,000 Chinese words or a fraction thereof and 10% increase might be acceptable in view of the average 10% increase for the past 10 years in Japan, although there are few instances of 10% to 20% increase in the market. As to the use compensation for the foreign language, the IPO finds that it normally ranges from NTD1,500 to 2,000.
As to whether the use compensation for the artistic, photographic or graphic work should be adjusted, in view of the current practices of NTD500 for each sheet or NTD1,000 if used for cover or back cover, the IPO in its initial research opinions proposes, with reference to the Japanese practices, NTD500 for 1/4 sheet-size, NTD 1,000 for 1/4 to 1/2 sheet-size and NTD1,500 for more than 1/2 sheet size or cover. In regard to the use compensation for the audio/video works, IPO believes that the current practices that NTD2,000 are collected for every 3 minutes or a fraction thereof should be maintained.
As to whether the current practices for the use compensation for music works that either lyric or music of a song shall be compensated for NTD2,000 and that 75% compensation shall be applied if more than two compensations, for the purposes identified in Article 47(1)/(2) of the Copyright Act (for compiling a textbook or the like) should be paid, for the original and derivative works should be adjusted, IPO consider them proper and proposes, if adjustment is to be made with reference to the practices in South Korea, three stages of NTD500 if less than 1/4 contents of a music work are used, NTD1,000 for 1/4 to 1/2 contents and NTD1,500 for more than 1/2 contents. With regard to how long the use compensation stands good as a licensed period, IPO holds that it is a consensus in the industry that the use compensation is directed to a version, that the licensed period shall correspond to the period shown in the review-approved license and that it would be another version if more than 1/5 contents are revised.
As to whether there should be a deposit period for a copyright owner unidentifiable for contact or payment, IPO takes unnecessary to enact such provision, in view of Article 326 “when the creditor is in default, or when it is impossible to know exactly who the creditor is so that performance becomes difficult, the person tendering the performance may lodge the prestation for the creditor”, and Article 327 “lodgment shall be made in the lodgment office of the courthouse at the place of performance” of the Civil Code. As to whether there should be a provision providing the time at which the user should pay the use compensation, IPO also holds unnecessary in view of Article 524 of the Civil Code as follows:
“Remuneration shall be paid when
the reproduction of the whole writing is completed, if it is to be issued as a
whole, or when the reproduction of each part is completed if it is to be issued
Use Compensation for Public Broadcast Announced by Music Copyright Intermediary Society of Chinese Taipei (MCISCT)
Originally, the use compensation is 0.3% of the fiscal budge for non-commercial radio TV, 0.1% for educational or religious satellite TV and 1% for nonprofit radio TV. Effective from December 9, 2008, MCISCT revised the respective royalties or use compensations as follows:
1. For radio TV, 0.15%*(total revenue – 15% advertise commission – rent revenue – royalty revenue – interest revenue) for cultural or educational private entity or governmental channel;
2. For satellite TV, 0.3%*(0.3% total expenditure in the preceding year + total advertisement revenue in the preceding year + total licensing revenue) for cultural or educational private entity or governmental channel, or 0.3%*(40% of the business revenue + total licensing revenue) for the shopping channel; and
3. For radio broadcast, 50% of the least use compensation of the respective profit-making channel for cultural or educational private entity or governmental channel where the least use compensations are as follows:
A. Nationwide FM: NTD1,200,00 per year per channel;
B. Nationwide AM: NTD600,000 per year per channel;
C. Local FM:
a. Medium Power: NTD200,000 per year per channel;
b. Small Power: NTD50,000 per year per channel;
D. Local AM: NTD100,000 per year per channel.
The above revision is made in view of Article 23 of Copyright Intermediary Organization Act providing:
“An intermediary organization
shall prepare a catalog of economic rights to works covering the following
Effective from May 8, 2008, any one who has petitioned to obtain an electronic certificate and a digital signature from the IPO can electronically file a patent, utility model or design application. Upon electronically filing, nearly any document, e.g. assignment or power of attorney, could be electronically submitted if declared by the patent attorney that the submitted copy is a true copy of the original thereof, provided that the IPO reserves the power to require the submission of the original of the relevant for verification. Although under Article 11(2) of the Enforcement Rule of Electronic Patent Filing that the priority document shall be the original or the verified copy issued by a relevant foreign government, in practice, an electronic file of the priority document is acceptable by the IPO as long as the patent attorney declares that the original or verified copy thereof is kept in her/his file.
The direct advantage of electronic filing is the saving of NT$600 in respect of the official fee although it will take about half an hour for electronically establishing an account for a specific applicant. In addition, although it is possible to electronically file documents for any an application at any stage or phase during its prosecution, not all applications can be electronically performed. For example, a divisional application must be filed in the traditional way partly because it shall be accompanied with the specifications of all other divisional applications.
One day later than the Enforcement Rule of Electronic Patent Filing, the Enforcement Rule of Electronic Trademark Filing became effective from May 9, 2008. Contrary to the patent filing, a trademark electronic filing user needs to obtain an electronic signature in advance. Specifically, as long as an electronic signature is obtained, the uses can electronically file a trademark application. Nevertheless, even if the user has the electronic certificate, a digital signature or an electronic signature is still required.
Accelerated Patent Examination Procedure
Until now, this country does not enter into any patent prosecution highway project. In view of the spirits of the patent prosecution highway program in other countries allowing the report of a notice of allowance or the granted publication by the applicant for its submitting relevant documents and references for facilitating the completion of the examining opinions, the accelerated patent examination procedure (APEP) is initiated. This APEP can be petitioned when the corresponding foreign application subject to the substantive examination has obtained a favorable examination result after the Taiwanese application has received a notification that the application will be put in a substantive examination or re-examination. According to IPO:
1. It is unimportant whether the Taiwanese application has claimed the priority of the corresponding foreign application. Rather, what is essential is whether the former application has a subject matter disclosed in the latter application;
2. The nationality of the corresponding foreign application is not limited for the purpose of petitioning the APEP. Accordingly, if the foreign patent office exercises a loose patentable standard, it would be advantageous for the applicant to conduct such petition;
3. Although an APEP petition could be made for an application being under examination, if the applicant has narrowed down its claim scope in response to such requirement from the IPO, the applicant shall avoid petitioning an APEP by submitting the corresponding foreign application having a larger scope, in order not to waste the administrative costs. In this regard, we have the following opinions:
I. To have a more accurate examination should be more important than to waste a little bit examination effort;
II. Whether the applicant has complied with the official requirement to narrow down the scope should not be a decisive factor for petitioning the APEP since it is normally for the applicant to respond to the official communication or requirement merely because the response deadline is approaching;
III. The IPO merely states that the applicant shall avoid petitioning the APEP in the specific situation. It would thus appear that it is not imperative that the applicant shall not make such petition.
To petition such APEP, one shall submit the following:
1. An APEP petition form;
2. The granted claim text (together with its Chinese translation) in the corresponding application, or a notice of allowance together with the claim text (with their Chinese translations) to be published;
3. If the claim text in the corresponding foreign application is different from that in the Taiwanese application, the difference illustration, if any, shall be submitted;
4. While the above three items are indispensable, any other documents capable of facilitating the IPO’s examination, e.g. the search report, the marked version showing the difference between the Taiwanese application and the corresponding foreign application, and the examination opinions in the corresponding foreign application and the response thereto (including Chinese translations of the most relevant parts) are welcome to be submitted.
Generally, the IPO will endeavor to issue its examination result in 6 months after the petition for APEP is made.
Patent Compulsory License
There are proposed amendments to be made to the compulsory license provisons. We would like to report opinions from various sectors. Opinions from the Fair Trade Commission (FTC) are that it is improper for it to get involved in the compulsory license at the present stage and the only thing which should be done is to delete “or unfair competition” and “for which there is an irrevocable” from Article 76(2) of the Patent Law, providing “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.”
Opinions from professors and attorneys include inter alia:
1. If FTC considers the compulsory license is a kind of remedy but is inappropriate to be adopted by now, FTC could either render a compulsory license decision or declare there is a restrictive competition or unfair competition act. With the latter declaration, one can petition a compulsory license before IPO;
2. Under TRIPs, a compulsory license due to nonprofit use for public interests does not necessitate a negotiation under reasonable commercial conditions. What should be carefully scrutinized should be whether it is a nonprofit use for public interests rather than whether there is an advanced negotiation under reasonable commercial conditions;
3. It might deserve reconsideration as to whether for a semiconductor patent, a later patent cannot petition for a compulsory license;
4. A repeal should be able to be petitioned if the compulsory license becomes no more necessary;
5. In a case where a substantive examination for compulsory is not required, it is unnecessary to notify the patentee for a response as provided in the current Article 76(3).
IPO responds to the above opinions as follows:
1. The reason why a negotiation under reasonable commercial conditions is made prerequisite is the consideration of equal positions;
2. The provision “the scope and duration of the compulsory license shall be limited to the granted purpose” will be reflected in the amended law;
3. The proposed amended law will categorize the compulsory license into a first type in which IPO makes no examination but automatically render its grant, and a second type in which IPO shall exercise its discretion as to whether a compulsory license is justified;
4. The amended provisions for compulsory license by a later patentee will be revised to correspond to those reflected in TRIPs;
5. As to compulsory license for plant varieties (or other biotech patents), the amended provisions will be revised to reflect those in Article 12 of 98/44/EC;
6. The spirits of TRIPs 31(c) that “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” and of TRIPs 32(k) that “members are not obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive” will be reflected in the amended text;
7. For reflecting the spirits in Decision of the General Council of 30 August 2003 for implementation of paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health for helping to supply the medicines necessary in, e.g. the least-developed country members, there are corresponding provisions in the amended law.
Proposed Patent Practices Improvements
There are some patent practices that are very likely to be enacted or adopted in the future as followings:
1. If unintentionally failing to claim the priority upon filing the application, an applicant may petition to restore the priority within 16 months from the earliest priority date by paying the petition fee and supplementing the required acts;
2. The certificate of deposit and the certificate of viability will be combined into a certificate so that there will be no certificate issued if the deposited biological material is not viable. Also, deposition is a part of the disclosure and is a factor on which a patent being patentable or not is based, but shall not be a requirement for securing a filing date as the current law takes;
3. Animal (excluding human being) or plant will be patentable;
4. Whether the Chinese text could be amended depends on the technical contents of the foreign text submitted upon filing;
5. The current patent law (Article 26) provides that the claim recitation must be supported by the description ‘and’ drawings, though it is not strictly followed. It is proposed that if a desired recitation is merely supported by the drawings, the relevant technical contents need be added into the description first;
6. Specification will be defined to exclude the abstract, claims and drawings. If unintentionally failing to pay the issue fee and the first annuity, within six months after the original deadline, the applicant could petition the restoration of the patent rights by paying the issue fee and double amount of the first annuity;
7. The patent prolongation petition could be made by any of the co-owners rather than all co-owners as the current law requires;
8. Patent rights cannot be enforced against an act which is privately done without a commercial purpose. It is to be noted that the wording commercial is different from that of profit-making. As long as it is commercial, it could be enforced by a patent even though it is not profit-making;
9. Also, since research or experiment made on a patented invention could promote the innovation or improvement in the technological field, such acts need not be subject to nonprofit purpose, as supported by Article 15(1)(ii) of UPOV (The International Union for the Protection of New Varieties of Plants). Further, such acts can include one for teaching/educating purpose so that such purpose will not be expressly provided. In addition, although such acts could include making, selling, offering for sale, using and importing events directly related to the research or experiment, such act extension should be deliberately and conservatively exercised in order not to harm the rights of the patentee;
10. It will be expressly provided that the restored patent cannot be enforced against a third party who practices the invention after the patent has lapsed;
11. International exhaustion for patent rights is expressly provided;
12. There will be provided with a definition for the exclusive licensee capable of, e.g. curbing the patentee from practicing the invention or sublicensing others;
13. The amended law will make it clear that the translation error is correctible either before or after the application is allowed. This might be a good news for some foreign clients who extremely care the translation quality of their applications. But this is not saying that it is not important to have a good translation since it will be enacted into the new law that after the application is allowed, the claim scope cannot be corrected to have a scope broader that being allowed. Accordingly, if a compromise is desired, a fee-competitive firm capable of securing an exactly correct claim scope might be considerable;
14. From the second annuity on, if a patentee misses the six-month surcharge period after the original deadline for paying the annuity by paying the annuity in double amount, it can rescue the patent in one year after the six-month surcharge period expires by paying the annuity in triple amount. Further, for petitioning restoration in the six-moth surcharge period in the future, every month will be collected 20% of the original due annuity up to 100%;
15. Under the new definition, the word ‘specification’ will not include the abstract, the claims and the drawings;
16. Patent marking requirement will be abolished;
17. The treble damages provision will be abolished and the reasonable royalty provision will be introduced;
18. The reversal of burden of proof for a new method will be applicable as long as the involved product is new domestically rather than internationally in the current law;
19. Partial design will be patentable. Also, computer-generated icons or graphical user interface (GUI) will be expressly provided to be patentable;
20. The associated design system where the scope or protection thereof is merely to confirm the scope of the parent design will be abolished. Instead, a derivative design will be enacted to have its independent similar scope and can be independently enforced against infringement although it cannot have a filing date earlier than that of the parent/original design and a derivative design thereof. Further, the derivative will expire with the parent design as the current associated design, but have its own patent certificate and need to pay its own annuity as the current does not. In addition, the derivative will exist even though the original design is cancelled while the associated design will not. Also, the derivative design and the original design or another derivative design must always belong to the same owner;
21. Group or set design system including two or more designs belonging one design conception will be introduced where one design conception means they are of common design or same general character. Upon enforcement, such design must be considered as a whole so that sub-designs cannot be independently enforced;
22. There will be a final notification system by which is meant that either in the preliminary examination stage or in the re-examination stage (where in these two stages for the same application, the examiners are different), the examiner in charge could exercise her/his discretion to issue a final notification once s/he is prepared to conclude the stage if s/he believes no further communication between her/him and the applicant is necessary or helpful for the examination after one or more communications therebetween have been made. If the opinions in the preliminary examination stage are adopted by the re-examination stage and are not solved by the applicant, after the applicant has applied for reexamination, the examiner in charge of the re-examination could immediately issue the final notification in this stage. After the final notification, the applicant could only comply with the opinions or requirements of the examiner in order to free from receiving a formal rejecting office action.
Proposed Patent Law Amendment (Relating to Pharmaceuticals)
The current Article 52(1) of the Patent Law provides that “Where practice of an invention patent about pharmaceutical, agricultural medicine or the manufacturing method thereof pursuant to other law shall be preceded by a permit obtainable for more than two years after publication of the patent application, the patentee may once for all petition to extend the patent term for two to five years, provided the granted extended patent term shall not exceed the time period required for obtaining the permit from the governmental agency in charge thereof and shall still be limited to five years even the time for acquiring the permit is over five years.” In the proposed amended law, the IPO makes the following clear:
1. The lower limit of two years in the above paragraph will be lifted;
2. The above paragraph is not applicable to the animal drugs;
3. Even though there are several permits for a patent, only an optional one out of these permits could be used for making the petition;
4. Even though a permit could be applied to several patent, the permit can be used only once.
Specifically, if there are 4 patents respectively directed to compounds A, B and C, compounds A, B and C for painkilling, compounds A, B and C for treating heart disease, a paster containing the compound B for treating headache, and there are 4 permits respectively directed to a tablet comprising the compound A for painkilling, a tablet comprising the compound A for treating the heart disease, a tablet comprising the compound B for treating headache and a paster comprising the compound B for treating headache where the last permit is obtained based on the third permit, we could establish the following table:
1. For the #1 patent, although 4 permits are respectively required for practicing the respective products protected thereunder, Permit 4 is derived from Permit 3 so that it is not the first permit for the # 1 patent. Accordingly, only Permits 1, 2 and 3 are first permits therefor and could be optionally selected to be used for prolonging the patent term therefor;
2. By the same token, for the #2 patent, only Permits 1 and 3 are the first permits therefor and could be optionally selected to be used for prolonging the patent term therefor;
3. For the #3 patent, Permit 2 could be used for prolonging the patent term therefor;
4. For the #4 patent, Permit 4 could be used for prolonging the patent term therefor;
5. It is to be noted again that the same permit could only be used for one time.
A new article is to be enacted in order to make it clear that if the patent term prolongation is approved by the IPO only until the patent expires, the prolongation shall count from the date following the expiration of the patent.
Another new article is to be enacted in order to make it clear that the protection for the patent rights during the prolonged patent term is to be limited to the scope of the effective components or use shown in the permit based on which the prolongation is made possible.
A further new article is to be enacted to provide that the patent rights cannot be enforced against any necessary act for practicing the invention for the purposes of research and/or experiment relating to a permit of a drug inspection recordal or a foreign marketing permit. Specifically:
1. This will help accelerate the availability of the generic drug to contemplate the public health welfare;
2. As long as it is related to petition the inspection recordal permit, any act, regardless of pre-clinical or clinical trial, including the experiment itself or the manufacture, offer for sale, sell, use or importation directly related thereto for practicing the invention will be exempt from patent protection.
Another new article is provided to allow compulsory license for helping countries having no or insufficient drug-manufacturing capability for acquiring medicines for treating AIDS, tuberculosis, malaria or other infectious diseases. Conditions and terms the applicant or the importing country must follow are also provided. Also, there is an article to reflect the various spirits in Decision of the General Council of 30 August 2003 for implementation of paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health.
Proposed Patent Examination Guidelines on Pharmaceutical-Related Inventions
Whether a claim directed to a method for detecting a blood glucose, measuring a concentration of the blood glucose upon blood taking by means of a blood glucose meter incorporating therewith a blood taking needle belongs to a diagnosis method? In answering such question, IPO takes that knowing the blood glucose concentration without a step of determining what kind of disease symptom or cause is appearing should not be a diagnosis but that since the blood taking step invades into the body, it might involve an operation method to be unpatentable. We are of the opinions that IPO is too conservative to so take since the diagnosing procedure might be more important than the diagnosing outcome so that simply being in lack of a step of determining a diagnosed outcome might not be critical in deciding whether what is involved in is a diagnosis method. What is more, it might not be so correct to judge a method to be an operation simply because the method involves an incursion to the human body. As an example, orally delivering a contrast agent is regarded by IPO as irrelevant to an operation method. It might be difficult to explain away why an oral delivery is not an incursion as might be readily evident that IPO will take, without failure, that a gastroscope inspection relates to an operation.
According to IPO, if a method has a therapeutic effect and a non-therapeutic effect being mutually inseparable, the method is a therapeutic method. In order for a method to stay away from relating to an operation, it must be both non-hurt and non-incursion.
Patent Infringement Issues
There are proposed amendments to the Patent Law on the patent infringement in respect of the following three issues: whether there shall be a subjective requirement for patent infringement, whether indirect infringement shall be introduced and whether the reasonable royalty shall be enacted as a way for damages. As to the subjective requirement, there are the following opinions:
1. Infringement and damages shall be separately dealt with since the preclusion of the infringement shall be conducted regardless of whether there is an intention or negligence but the prerequisite for damages is that there at least is a subjective negligence, which, however, is not easy to be proved. In Japan, it is a presumed negligence. In Germany, the accused bears the burden of proof. Since all laws are enacted to protect others, it is improper to assert the presumed negligence under Article 184(2) of the Civil Code through simply violating the Patent Law. Under local legal practices, negligence is referred to abstract slight negligence meaning that a care obligation of a good administrator is not observed. In early industrializing days, Germany adopted specific slight negligence for encouraging invention/creation;
2. Since the civil and commercial matters in this country are unified under the same system, IPO takes that the liability of patent infringement will be restricted to one having an intention or negligence.
In order to better know and investigate the derivation and evolution of the subjective requirement, we would like to further discuss this issue as follows. Article 84(1) of the current Patent Law provides that “whenever there is an infringement on an invention patent right, the patentee may claim damages, petition to preclude the infringement and petition to prevent from it in the event of likelihood of an infringement.” Since this provision does not clearly provide the subjective requirement, there are three viewpoints from the court practices:
1. Negligence Liability: This requires that there must be a subjective intention or negligence before a patent infringement could be established;
2. Violating Law Protecting Others: In as much as the grant of a patent will be published in the Patent Gazette to have a public announcement effect, the infringer will violate the Patent Law for protecting the patentee and shall be held liable under Article 184(2) of the Civil Code;
3. No-Fault Liability: In order to secure the protection derivable from the Patent Law, the infringer shall be liable for the damages involved in as long as there is an infringement.
Article 88(1) of the Copyright Act provides that “a person who unlawfully infringes on another person's proprietary rights or plate rights out of intention or negligence shall be liable for damages. Where multiple persons engage in unlawful infringement, they shall bear joint and separate liability for damages.” Article 102 of the Japanese Patent Law provides that “where a patentee or an exclusive licensee claims against an infringer compensation for damage sustained as a result of the intentional or negligent infringement of the patent right or exclusive license, and the act of infringement consists of the assignment of articles, the amount of damage sustained by the patentee or the exclusive licensee may be presumed.’ Article 139(2) of German Patent Law provides that ”any person who undertakes such action intentionally or negligently shall be liable for compensation to the injured party for the damage suffered therefrom. If the infringer is charged with only slight negligence, the court may fix, in lieu of compensation, an indemnity within the limits of the damage to the injured party and the profit which has accrued to the infringer.” According to these legislations, IPO comes to the conclusion that the patent infringement shall be determined by the same principles with the Civil Code. That is, a subjective requirement of intention or negligence must be established before a patent infringement could be established. Nevertheless, it is unclear whether or how the IPO has interpreted the referenced Article 103 of Japanese Patent Law providing that “an infringer of a patent right or exclusive license of another person is presumed negligent in the commission of said act of infringement,” which possibly approaches, if not equal, to the above-mentioned No-Fault Liability.
As to indirect infringement, opinions from various sectors are as follows:
1. It is commonly accepted that if an essential element of a patent is knowingly practiced, which is likely to result in a direct infringement, the patent right will be deteriorated if there is no legislation made to resolve this situation. Since the co-infringer concept in the Civil Code cannot cover various types of infringement, it would appear suggestible to enact the indirect infringement seemingly including inducement, help and contributory infringement;
2. In the civil theory, there is an accessory only when there is a principal. Under patent practices, an accessory could be established even though there is no principal;
3. Since in direct infringement, there still are all elements rule and doctrine of equivalents, we might need to reconsider whether it is really enough to merely require that the involved element be indispensable or essential.
References are made to 35USC271, Article 26 (prohibition of indirect use of the invention) of Luxemburg Convention on the Community Patent, Article 101 of Japanese Patent Law and Article 127 of Korean Patent Law before it is concluded that such provisions are to form an independent infringement type covering co-infringement, abetting infringement and accessory infringement. Accordingly, IPO analyzes as follows:
1. Since under the current law, an infringement could be established only when the all elements rule is satisfied so that the preparatory step of producing the essential element for a final infringement cannot be curbed in advance for better protecting the patent rights;
2. Under tort in this country, the adequate causality theory is adopted, which means that “although such loss is not necessitated to occur if there is no such act, such act generally generates such loss; there will be no causality if although such loss will not be incurred without such act, such act will generally not incur such loss.” Nevertheless, under this adequate causality, it is possible to establish a co-infringement for an act objectively supplying a staple article;
3. The legislations in the above-mentioned 4 foreign countries have restricted the liable scope with the intentional subjective requirement and objective requirement of involving an essential element, and generally adopt that an indirect infringement could be independently established without the occurrence of a direct infringement;
4. Accordingly, it is preferable to enact an article to follow the spirits reflected in the above foreign enactments.
As to the third issue of the reasonable royalty for damages, various opinions generally agree to provide the reasonable royalty to serve as the damages, and some professors add that the punitive damages (i.e. the treble damages) should be deleted. Under Article 85(1) of the Patent Law, the loss can be optionally calculated from 1) pursuant to the provision of Article 216 of the Civil Code (providing that suffered loss and lost profits add up to sought damages), 2) the difference of subtracting the profit normally acquirable through his practicing patent right by the gained profit of practicing the same patent right after infringement, and 3) the infringer’s gained profit which shall be the overall revenue of selling said article when the infringer is unable to prove its costs or necessary expenses. Accordingly, this provision is a special one of those of the Civil Code from the academic viewpoints and the court practices so that for those not provided in the Patent Law, the Civil Code will apply. Thus, we will suffer from difficulties in claiming reasonable royalty based on Article 216 of the Civil Code because:
1. It is easy for Article 216 of the Civil Code to be applied to a tangible object since it is not difficult to prove there is a right trespass. For a patent infringement, however, even if there is an infringer, the patentee needs not necessarily be damages since it is quite possible that owing to the circulation of the infringing products, the products gain famed and the demand of such products is increased so that both of the patentee and the infringer make great money;
2. It is hard for the patentee to prove that without the infringement, a higher loyalty is possible or that due to the infringement, it is impossible to enter into any a licensing agreement with any other. Without such proof, the patentee cannot claim the lost profits according to Article 126 of the Civil Code.
Accordingly, with reference to what are provided in 35USC284, Article 102 (presumption of amount of damage, etc.) of Japanese Patent Law and Article 60 of the Patent Law and court practices in Mainland China, IPO concludes that the reasonable royalty provision should be provided in the amended law.
Examination Guidelines for Chinese/Herbal Medicine-Related Inventions
In contrast with the active components of the chemical substance in the Western medicines, the Chinese/herbal medicines often have unknown effective components which are difficult to be separated or purified to get a single active substance having a specific structure. Further, there exist fundamental differences in functioning theories or principles of the Western medicines and the Chinese medicines. The exercise of single or compound (or multiple) prescriptions is hardly seen in respect of the Western medicines. Due to the increased demand, the examination guidelines therefor are thus completed in 2008. The Chinese/herbal medicines as defined here are referred to include natural products of plant, animal, mineral, phycomycete and fungus, or their abstract or composition, but not include a single compound or its composition. We will here report the unique standards therefor different from the normal or regular ones with which we are familiar.
As the same with other inventions, the Chinese/herbal medicines could be drafted as inventions of object, method and use. Nevertheless, the use claim here can only be drafted as an object with its use. As such, a use claim as a matter of fact is a kind of object (or product or manufacture) claim dedicated for a specific use. The Guidelines make it clear that the specification shall include specific raw materials, components, proportion, preparing steps, conditions, effects and use substantiated by concrete data or information. For example, for the raw material of trichosanthes, the specification should identify whether it is referred to the root of the Trichosanthes kirilowii Maxim. or T. japonica Regel. Also, the same name might be referred to different materials or the same material might have different names so that every material should be named based on the traditional books or the formal name under taxonomy.
Since the origin, the collected season or the used part of a Chinese/herbal medicine have controlling significances on the performance or the contents of the effective component thereof, unconventional one shall have all of these disclosed.
If the claimed Chinese/herbal medicine is an abstract, the preparing method and the property or characteristic thereof should be described. There should be at least one embodiment in the preparing method. As to the property or characteristic thereof, there should be disclosed with at least one parameter, e.g. a physical characteristic, a chemical characteristic or other (e.g. a bioactivity), e.g. molecular weight, melting point, specific rotation, absorbing spectrum of violet or infrared, NMR, mass spectrograph, solubility, color reaction, PH value, luster, fingerprint spectrum or physical state (e.g. solid, liquid or vapor) for the identification thereof. As to the proportion for materials in the composition, it can be their weights, weight percentages, weight proportion, weight parts or weight scopes.
The required number of tested samples for verifying or evaluating the treating effectiveness depends on whether the tested results are significant based on the recognition and understanding of one skilled in the art. For example, an invention for treating a disease having unknown pathogenic mechanism and/or treating mechanism, or very few disease histories, few tested samples for verifying or evaluating the treating effectiveness will be significant. In addition to reasoning the treatment and differentiation of symptoms of a disease according to the principles or theories of the Chinese Medication with the substantiation through verifiable objective measurable indexes for evaluation, it is also appropriate to substantiate the treating effectiveness of a Chinese/herbal medicine through the ways the Western drug demonstrates its pharmacological function.
Not only a disease might have different symptoms and a symptom might come from different diseases but also there might be multiple medicines for the same symptom originating from various diseases. Accordingly, there will be insufficient disclosure if one skilled in the art cannot exactly identify the claimed invention for a specific symptom owing to a specific disease. To define the curing effectiveness of the Chinese/herbal medicines by the disease or symptom according to the Chinese medication or the pharmacological function or a disease according to the Western medication, the applicant must submit at least one of the following:
1. The relation between the disease or symptom according to the Chinese medication and the pharmacological function or disease according to the Western medication; and
2. Relevant proofs for evidencing the curing effectiveness.
If an abstract defines its curing effectiveness according to the symptom or disease of Chinese medication, the specification shall be accompanied by pharmacological descriptions, cited references or relevant proofs proving the curing effectiveness since after separated or abstracted, the original recipe might not have any relation with the abstract.
An abstract normally contains plural components and is beyond possible to be defined by chemical name, molecular formula, structural formula or chemical property so that it often uses steps to define the product. Under such situation, the Guidelines take that an abstract X abstracted from a material A through steps P1, P2 and P3 is protecting the abstract X itself but not material A or steps P1, P2 and P3. In this respect, we have the following comments:
1. Under all elements rule, any word or recitation in a claim is significant or material to the interpretation of the claim. Accordingly, we cannot agree that in the above example, material A or step P1, P2 or P3 is not an element of the claim, especially in view of the recognition of the IPO that different methods might not result in a different abstract;
2. If the applicant really desires to protect abstract X itself, the claim should be directed to the abstract itself without referring to material A or step P1, P2 or P3;
3. It is not always impossible to define abstract X without the mentioning of material A or step P1, P2 or P3. For example, we might claim abstract X with the following recitation ‘an abstract X obtained through the abstraction of a material A’ if it is novel and non-obvious;
4. The above example can be put as an independent claim set in addition to an independent claim set directed to abstract X per se.
The Guidelines appear making some confusions or misunderstanding in taking that a use claim must be a method claim. For example, “a material A used for preparing a medicine for treating a disease X (or pharmacological function Y)” (hereinafter referred to as First Recitation) is regarded equivalent to ‘a method of using a material A for preparing a medicine for treating a disease X (or pharmacological function Y).’ (hereinafter referred to as Second Recitation) In this respect, we have the following comments:
1. First Recitation should be referring to a product claim (material A) with a protecting scope limited to being used for preparing the medicine;
2. Second Recitation is, as a matter of fact, a regular method claim;
3. Although the protections coming from the First and Second Recitations might not be different, it might be better to so distinguish them to retain the regular claim interpretation or keep the normal claim category.
The Guidelines might err in taking that if a disclosure in an application seeking patented an abstract could not demonstrate the uniqueness of the abstract but is directed to a different method, and could not illustrate there is any change in function or property for the abstract as a result of the different method used, it is presumed that the abstract has no novelty, because:
1. In theory, a method or step plays no weight in a product claim. Accordingly, it shall not be controlling whether the involved step or method in a product claim is different or not;
2. It appears that what is important is whether the abstract has novelty, non-obviousness and utility rather than whether the abstract exhibits what kind of uniqueness;
3. In theory, as long as a method bears novelty, non-obviousness and utility, it is no more necessary to prove whether the resulting product is unique to seek patented the method;
4. As above-mentioned, what is important is whether the abstract has novelty, non-obviousness and utility, it is irrelevant as to whether there is any change in function or property for the abstract as a result of the different method used.
The name or kind of symptom or disease in the Chinese medication is not directly related to that in the Western medication. Specifically, even if the Chinese medication and the Western medication use the same name, the disease might be different. Also, the same diagnosed results do not necessarily denote that they have the same definition. That is, there is neither mapping or corresponding nor hypernymy/hyponymy relationship therebetween. An invention has no novelty only when the prior art has both disclosed the corresponding relationship between the symptom or disease in Chinese medication and the disease in Western medication, and the claimed components and proportion.
Examination Guidelines on Computer Software-Related Inventions
Generally speaking, if the implementation of the algorithm involves a technical feature in the technical field, the computer software inventions shall be protectable under the Patent Law. Such inventions could be recited as a method or a product. A product claim to this effect could be a device, a data structure, a system, a computer readable recording medium and a computer program product (not necessarily stored in a recording medium but on, e.g. the Internet). A program language relates to an artificial arrangement rather than a natural rule so that it is unpatentable. A business method, if involving no natural rule, such as social rule, empirical rule, economic rule, competition strategy, pure business-running method, or pure transaction method of a financial or insurance product is unpatentable. Also, if an application merely disclosing a computerized operation for replacing manual procedures, it might be unpatentable if no technical attribute is involved in. Nevertheless, if implemented by a computer technique, it is of a technical nature rather than a business method per se. Accordingly, an implementing method for a certain commercial purpose of function through the aid of a computer hardware resource could be a technical feature in the technical field. As an example, while a method for auctioning an article is unpatentable, a method for auctioning an article through a communication network might be patentable if having a technical feature. If a computer program or data is read into the computer to functionally or structurally interrelate with what the computer is processing, there would possibly involve a technical idea.
It is interested to note that Guidelines follows the US practices for means plus function clause in the following ways. As interpreted by the US court practices, Guidelines take that a means plus function can only include the structure, material or step or its equivalents as disclosed in the specification. Guidelines further note:
1. Only when 1) the phrase ‘means for’ is used, 2) the phrase is followed by a specific function and 3) there is no recitation as to the full structure, material or step for performing the specific function in a claim, can the claim be interpreted as a means plus function;
2. Accordingly, if there is the 1) phrase but no 2) function, it is not a means plus function. Guidelines again footnote that if what is recited is ‘use’ or ‘result,’ it is irrelevant to function. One might question the logicalness or correctness of such a footnote since not only Guidelines do not explain what is the identicalness or differences between function and use or result, but also one might find it very difficult at least some times to distinguish function from use of result;
3. As long as the structure, material or step is not full enough to perform the specific function, the claim or the specific element in the claim will be interpreted as a means plus function;
4. Only the specific element, which is recited in a means plus function, rather than any others, recited in a claim will be interpreted through a means plus function practice.
Suggestions Provided by Deep & Far for Proposed Amended Taiwan Patent Law
There are various proposed amendments to the current Patent Law by the Taiwan IPO. This firm has submitted various major suggestions to the IPO for its reference or be put for discussions on various hearings it held. The new Article 35(2) is proposed to stipulate that “the division application in the preceding paragraph shall be made within the following terms:
1. Before the office action of reexamination for the original application is rendered;
2. Within 30 days following receipt of the office action allowing the original application provided this shall not apply if the office action of reexamination has been rendered.
The most incredible thing is that TIPO takes that the office action as referred to in the proposed Article 35(2)(2) is limited to the first office action but could not be a second office action. The main reason for such position by TIPO is that by the receipt of the second office action, there have been many opportunities for the applicant to file a divisional application. Our suggestions for this paragraph are as follows:
1. It appears that such amendments are directed to deal with different independent claim sets or a subject matter closely related to the claims in the original application so that the applicant might find it out in time. This, however, might not be very true in view of the fact that the preceding paragraph provides that “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”;
2. It would be contradictory if the law allows division within 30 days following receipt of the office action allowing the original application in the preliminary examination stage while rejecting division within 30 days following receipt of the office action allowing the original application in the reexamination stage. Specifically, although the reasons for amendments explain that this is provided not to delay the procedure and the applicant has many times and not a short time period for the decision of division, such amendments cannot rid out the considerations also seen in the reasons for amendments that “only when the application is allowed, the applicant will renewedly review the specification and claim scope again.” Accordingly, we suggest that this paragraph be amended as:
‘The division application in the preceding paragraph shall be made within the following terms:
1. Before the office action of reexamination rejecting the original application is rendered;
2. Within 30 days following receipt of the office action allowing the original application.’
3. The IPO might be considered as intelligent, advanced or progressive if this paragraph is amended as “the division application in the preceding paragraph shall be made within 30 days following receipt of the office action allowing the original application”;
4. The IPO would be really smart and competent if this paragraph is further amended as “the division application in the preceding paragraph shall be made prior to the publication or deemed abandonment of the original application” in order that the rights of an applicant of a Taiwanese application could have the rights as enjoyed in other countries, e.g. the US or Mainland China.
The proposed amended Article 35(5) provides that “an application divided under Paragraph 2(1) shall proceed examination under the procedure completed in the original application.” From this amendment, we could know that in the mind of IPO, the divisional application must have contents extremely similar with those of the original application so that the IPO could take the advantage of examination results or opinions in the original application. Nevertheless, this is apparently wrong if we really believe that the provision of Article 35(1) (the current Article 32(1)) that “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” is not kidding. Accordingly, the divisional application should be examined afresh rather than subject to the procedure having been completed in the original application, as could be readily understood from legislations in countries all over the world.
The proposed new Article 35(6) provides that “the application divided under Paragraph 2(2) proceeds the examination procedure prior to the allowing office action of the original application where the original application shall be published with the claims and drawings upon receiving the allowing office action.” Our suggestions for this paragraph are as follows:
1. The former paragraph half has been represented by Article 35(5) and should be added with ‘in the preliminary stage’ if insisted to be provided;
2. The latter paragraph half is a rational must and might be deleted.
The proposed newly added Article 33(2) provides that “where the applicant selects the invention patent under the preceding paragraph, the utility model patent rights are deemed inexistent ab initio.” This paragraph deals with the situation where an invention is both filed as a utility model application and an invention patent application. Since the utility model application is only subject to the formal examination, it will mature into a utility model patent in about 6 months from its filing date. After the invention patent application has been subjected to examination, it might be substantively regarded that the invention is really patentable. Since the patent law forbids double patenting, either the Patent Office or the applicant will encounter this issue. Our suggestions for IPO are as follows:
1. Although it is not baseless for the IPO to provide this paragraph under the principle of “one invention one patent,” the utility model patent is not a patent purely for decoration. Specifically, before the invention patent application matures into a patent, it is quite possible that the utility model patentee has enforced its rights through entering into a licensing agreement with some others and ‘legally’ collected royalties under the Taiwan Patent Law;
2. Upon selecting the invention patent, the provision of “deemed inexistent ab initio” would inevitably ruin the orders in the sector of private law. This is clearly acting against the autonomy of private laws since in the private law sector, the involved parties need rebuild the orders in life, in law and in psychology;
3. Although it might be possible that through such enactment, the people would get accustomed to such law amendment so that suitable prevention in this effect should be put into consideration upon enforcing a utility model patent whenever there might be existing the same invention both filed as an invention patent application and a utility model application, a masterly or advanced amendment should be made for solving the legal issue without damaging the current social orders;
4. It would thus be suggestible to amend this paragraph as “where the applicant selects the invention patent under the preceding paragraph, the utility model patent rights are deemed inexistent ex nunc from the date the rights of the invention patent are secured.” Although such proposal appears to be contradictory to the singularity concept derived from the rule of “an invention, a patent,” it would appear that such enactment will not harm the jurisprudence in any way after getting ourselves known to the facts that there are the above-mentioned benefits and what we are considering or dealing with is the exceptional case that there really historically exist two applications where the utility model patent is not only granted but also enforced first and although the invention patent comes later, the applicant selects the benefits of protecting its invention under the invention patent instead of utility model patent.
The subjective requirement for a patent infringement is provided in the proposed Article 99(2) “the patentee may claim damages against one who intentionally or through negligence illegally infringe its patent rights.” Most of the scholars in the patent-related field and the judicial precedents tend to assert that the patent infringement is a kind of tort so that the subjective requirement, i.e. intention or negligence, for the tort must be followed. Since the patentee needs to prove the patent infringer has an intention or negligence for infringement under such proposed new law, we remind the IPO to note Article 103 of the Japanese Patent Law providing that “a person who has infringed a patent right or exclusive license of another person shall be presumed to have been negligent as far as the act of infringement is concerned.” By which, the accused infringer needs to prove that there is nothing related to its intention or negligence about the involved infringement. Since the one who bears the burden of proof is very likely to lose his case under the Japanese patent practices, it is very near to the no-fault liability, which is clearly opposite to the tort theory. In our opinions, the modified no-fault liability principle is fair or more reasonable under the patent system since:
1. The patent has been published once patented;
2. The patent system has been existing for a reasonable long period of time and the big patent disputes in the main patent players, e.g. the US and Japan, have been well-reported in various countries so that patent protection is not alien to those who are working in the technological fields;
3. Patent notice requirement has been serving a major role in the modified no-fault liability. It is not justified for the IPO to exchange by its own will the patent notice requirement from the patentee with the modified no-fault liability protection available under the patent law for the patentee where the word ‘modified’ means the pure no-fault liability is modified by the requirement of patent notice;
4. If the infringer is really innocent, it should be not hard for it to prove that there is no intention or negligence in its part for the occurred infringement.
The newly added Article 100(1) provides that “it would be deemed a patent infringement if knowingly offering for sale or selling an article of a primary technical means used for solving a problem in an invention patent to a person without the legal rights to enforce the patent, without the consent from the patentee, provided this shall not apply if the article is a staple in commerce.” As a matter of fact, we know that this paragraph is something related to 35USC271(c). Nevertheless, from the IPO announcement, we knew that upon holding the hearing to collect opinions from various sectors about the proposed amended patent law, there are some scholars who are in fact not familiar with the patent law but express their opinions about how the patent law should be amended. Although this should be serious rather than funny, we would like the IPO to further consider the matter. Specifically, some scholars mention that a mold for producing a patented article should be infringing because it is a preparatory step for the afterward infringement. While such viewpoint might be funny since it would violate the international patent practices to define the protecting scope by the claims so that if the mold is not defined in the claims, the model will not be protected by the patent, we still urge the IPO to reconsider “whether ‘an article of a primary technical means used for solving a problem in an invention patent’ includes a device (e.g. a mold or apparatus for manufacturing A article (or method) where the patent is directed to the A article (or method)) compulsory for enforcing the claims but not confined in the claims. We further add or confuse the IPO as follows:
1. If the answer to the above question is yes, it is not literally covered in either the provision or the reasons of law amendments;
2. If not, we urge the IPO to notice the provisions of Article 101 of the Japanese Patent Law providing “the following acts shall be deemed to be an infringement of a patent right or exclusive license:
(i) in the case of a patent for an invention of a product, acts of manufacturing, assigning, leasing, displaying for the purpose of assignment or lease, or importing, in the course of trade, the articles to be used exclusively for the manufacture of the product;
(ii) in the case of a patent for an invention of a process, acts of manufacturing, assigning, leasing, displaying for the purpose of assignment or lease, or importing, in the course of trade, the articles to be used exclusively for the working of such invention.”
The most pricking but very simple or easy suggestion we made for IPO might be the adoption of the internationally standardized patent examination practices, i.e. to allow a single examiner to examine the same application from the beginning to the end of the prosecution in the patent office. It might be interested to know that under current Taiwan patent law or the proposed amended patent law, a patent application, if rejected, will subject to examination by two examiners. Specifically, after the application is allocated to be substantively examined by an examiner, when the examiner considers the application is to be rejected based on either her/his subjective opinions or cited references, s/he will issue at least one official communication for trying to reach a conclusion for examination of the application with the applicant. If s/he decides to reject the application and the applicant could not so accept, a ‘formal’ first office action will then be issued. It might sound strange to readers in other countries all over the world that in as much as there are one or more communication between the patent office and the applicant, why the formal office action rendered is still the ‘first.’ This is historical in that in the early days, under the Taiwan patent system, the office will issue a final office action if the response (or request for reexamination) to the first office action is found by the office not convincing.
Since in traditional Chinese culture, ‘emotion’ precedes ‘ration’ further preceding ‘law,’ which is just the reverse of the modern concept that ‘law’ precedes ‘ration’ further preceding ‘emotion,’ accordingly, in order to prevent the possibility that the examiner was contacted to be emotionally moved or bribed through a red envelope by the applicant, the patent law adopts the idea that different instances of court proceedings should have different judges to review the same case so that the reexamination stage should be performed by another examiner. While this is apparently inefficient and opposite to what are prevailing in any other country all over the world, people here nevertheless either feel this is fair or would like not to challenge such in efficient governmental operation.
In addition, this issue in early period is tough not only because this is related to the social culture but also since at that time, the examiners always rejected an application without citing any reference but based their rejections on their subjective judgment and/or knowledge. As such, another examiner who might have no prejudicial opinions on the application is generally anticipated and welcome.
Since the practice of a different examiner at the reexamination stage has been developed as a stereotype in the mind of people here including the officials in the IPO, in the proposed amended new law, an examiner in a specific stage is still a must although in either the preliminary examination stage or the reexamination stage, there already are possible many communication between the office and the applicant, which is basically what the full prosecution stage in the patent office in any other country all over the world. Accordingly, our opinions for different examiners in the preliminary and reexamination stages are as follows:
1. Since in either the preliminary stage or the reexamination stage, there already are many communication opportunities between the patent office and the applicant, the reexamination stage could be waived accordingly;
2. Only when a country, a patent office or an examiner is not self-confident, will it be necessary for the patent system to have two separate stages each of which offers more than one opportunities for communication between the office and the applicant. Since the Taiwan IP level is not weak anyhow, an independent examination stage is enough under the current practices allowing at least one intermediate communication;
3. Certainly, the current practice might not be perfect. For example, the interview, either face-to-face or telephone, is not popular or effective. The core issues are that the examiners do not like a telephone interview and that upon a face-to-face interview, the examiners are very passive and do not like to express her/his opinions or to direct the applicant what kinds of amendments might result in a notice of allowance. Perhaps, these are relics of the red-envelope culture. Specifically, the interviewing examiners try their best efforts to escape from the accusation that they might get any benefits from the applicant to so direct the applicant how to make amendments as to finally cause allowed the application involved. Accordingly, the interview proceedings are not really bilaterally but actually unilaterally. Specifically, the examiners only listen to what the applicant desires to say but never want to express what their opinions as to the patentability of the application they are examining to the applicant so that the interview system does not in any way function very well as it is attempted to;
4. Since each examiner in either of the two stages tends to be so kind as to be willing to issue as many as official letters as long as s/he deems necessary through official communication/response to/from the applicant, it is enough for a separate stage to perform the full prosecution in the patent office. The examination would be much improved if the interview system is rectified to simulate that in the EPO, the USPTO or JPO where an interview is established to mutually communicate between the patent office and the applicant and to promote the examination of the prosecution before the patent office so that it is irrelevant for the examiner to worry about there might be an improper connection between s/he and the applicant and it is an inappropriate to practice a unilateral interview.
Proposed Law Amendment In Respect of Patent Marking
Article 79 of Taiwan Patent Law provides that “An invention patentee shall mark on patented article or its package the patent number, may require licensee or compulsory licensee to so do, and shall not claim damages in failure to affix a mark, provided that this shall not apply if the infringer knows or it may be proved that the infringer could know the article is patented.” According to the surveys made by TIPO, while this article is not often applied in infringement dispute or litigation, in precedents of a limited number, there are different opinions. Specifically:
1. There are some decisions taking that this article is a subjective prerequisite for determining whether there is intention or negligence in the infringer to determine whether an infringement could be established;
2. There are some decisions taking that this article is a special or prerequisite requirement for initiating an infringement action;
3. There are some other decisions applying the provision of this article but expressing no viewpoint about the nature thereof.
TIPO comments that taking this article as a special or prerequisite requirement will aggravate the burden of the patentee in enforcing its rights, which, however, appears not to be the gist of this article, which, nevertheless, is intended to encourage the patentee to notify the general public of a product enjoying a patent protection, to help the general public to get known to the patent protection of the product and to declare to the general public through notice on the product or its label there exists a patent, in order to prevent from an innocent infringement. In addition, under the situations where the involved product, e.g. a chip, is tiny, is for bulk sale or has a special property, e.g. a method, not suitable for being labeled, it is unreasonable and impractical to require there be put with a notice. Accordingly, it is too much stern to interpret the patent notice to be a special requirement for enforcing the patent rights, especially in view of the healthy public announcement system and the burden of proof for the patentee to prove there is an intention or negligence on the part of the infringer. Specifically, this article is proposed to be amended in the following ways:
1. The clause ‘shall not claim damages in failure to affix a mark’ in the current law is deleted;
2. If it is difficult to label on the patented product, the notice could be put on the tag or package, or otherwise made to easily raise others’ attention;
3. The article is proposed to be amended into ‘the patented article shall be marked with the patent number. Where the patented article could not be marked, the mark could be put on tag or package or otherwise made sufficiently to cause others’ recognition. Where no mark is affixed, it shall be demonstrated that the infringer knows or it may be proved that the infringer could know the article is patented upon claiming damages.’
Opportunity for Partial Allowance
There sometimes are instances of office actions indicating an application will be allowed if the requirements as to how the claims should be deleted or combined are met. Until now, as long as such requirements are not met in the reexamination stage, the application will be driven into the appeal stage, in which not only a winning probability of less than one fourth is there, but also there is no formal report that an applicant could succeed in securing patented a part of claims having been held allowable before receiving a formal office action rejecting the arguments traversing the claim-deleting or combining requirements. It is accordingly suggested that the application should be allowed while those claims held unallowable are rejected. TIPO responds to this suggestion by pointing out that there is no country in the world adopting such system. In addition, not only the applicant is amply free to divide out those claims held unallowable upon receiving the office action, but also it could not be known how an action showing a part of claims is allowable while another part of claims is unallowable could be published, which is never comparable to the partial cancellation of a patent. We cannot agree with the response from TIPO in that:
1. As a matter of fact, there is no country in the world adopting the practices prevailing in TIPO rather than there is no country adopting the suggested practices as alleged thereby. Specifically, there hardly is a country permitting no opportunity to secure a patent directed to those shown in an office action to be allowable after receiving the office action. The myth of TIPO may be that it has shown the necessity to amend or incorporate the claims in a first office action by which the applicant should diligently act thereupon to effect the potential divisional application so that after a second office action directed to the same issue is made, all faults could be totally attributed to the applicant while TIPO has rendered its utmost goodwill in this respect through issuing the first office action in advance. It would be evident for TIPO to fail in realizing that:
A. The issuance of the first office action would not take the applicant away from the rights of being offered with an opportunity to secure a patent directed to those having been held to be allowable after receiving the second office action;
B. The applicant shall have rights to argue against the examiner how and why the requirements in the first office action are not proper and shall not be punishable simply because the applicant has made such arguments since it is the inherent nature of a person to try her/his last efforts to strive for statutory rights;
C. Even after the second office action is issued at which time the prosecution before TIPO is finished, the applicant shall not be deprived of the rights seeking patented a part of the claims having been held allowable by TIPO being an administrative authority rather than a judicial authority;
D. Having issued with the first office action and/or having argued against the first office action shall not excuse away the righteousness of the deprival of the rights seeking secured what the applicant is originally assumed to enjoy if it exercises its compliance with what might be improper or unjustifiable requirements;
E. It might deserve everybody including TIPO to try to realize or detect why and why TIPO takes that there is no country in the world adopting such system.
2. The fact that the applicant is amply free to divide out those claims held unallowable upon receiving the first office action cannot serve as bases for turning down the protection for the applicant after receiving the second office action to secure the statutory rights in patenting the claims already held allowable, through the reasons mentioned above;
3. The question and concerns that it could not be known how an action showing a part of claims is allowable while another part of claims is unallowable could be published seem awkward and unprofessional in that anyone would know after given the opportunity to act after receiving the second office action, the applicant would divide out the then-held unallowable claims into a divisional application so that the original application would only contain claims having been held allowable. Under such situation, how would the above question and concerns come?
4. While such issue might not be exactly comparable to the partial cancellation of a patent where the prior art could only invalidate some of the allowed claims so that the applicant would be left with an opportunity to revise the claims to be patentable, we do not see any significant rationale that such issue should be differently treated from that for partial cancellation of a patent.
Examination on Invalidation Proceedings
Article 67(1) provides when the invalidation proceedings could be initiated by stipulating that “The patent-dedicated office shall cancel upon invalidation or ex officio an invention patent right in any of the following circumstances and order to return the certificate within a specified period, and shall announce it nullified if not returnable:
1. There is a violation of provisions of the first paragraph of Article 12, Articles 21 through 24, Article 26, Article 31 or the fourth paragraph of Article 49;
2. The country to which a patentee belongs does not entertain a patent applicant filed by a national of ROC;
3. An invention patentee is not the entitled invention patent applicant.”
From this provision, we could know that a patent could be cancelled either through a petition of invalidation or ex officio. Although there are a number of revisions to the invalidation proceedings in the proposed amended patent law, the situation that a patent could be cancelled ex officio for being in lack of the patentability is not changed. Nevertheless, TIPO takes the following positions:
1. A first invalidation proceeding against a patent could be incorporated with a second invalidation proceeding against the same patent for examination, while if either of the invalidation petitioners would like to appeal the office action, it shall appeal the part belonging thereto;
2. In as much as the two invalidation proceedings have been incorporated for examination, the respective proofs/evidence could now be optionally combined by the examiner for examination but will allow the opportunity for arguments in this respect by the patentee;
3. If there are two independent claims in a patent while only one of them is invalidated, the office will not examine another claim since this has gone beyond the claims of the invalidation proceedings. Specifically, the invalidation examination will subject to the limitation of the claims for the invalidation proceeding but will not be confined by the invalidation briefs and/or proofs/evidence.
The positions of TIPO sound somehow strange as follows:
1. The fact that a first invalidation proceeding against a patent could be incorporated with a second invalidation proceeding against the same patent for examination is not relevant to whether an examination of an invalidation proceeding is made ex officio or not. Instead, this should merely be a kind of administrative expediency;
2. If only a part of claims in a patent is petitioned to be invalidated and the Patent Office holds the part shall be invalidated, it is improper for the Office to leave the rest part unexamined since the Patent Office has now good reasons to believe that the patent in issue shall be cancelled in totality rather than in part. If the Patent Office will not cancel the patent under such situation, it might be hard to find another situation to exercise ex officio a cancellation of a patent. Further, although patent rights are private per se, they could be enforced to interfere with the freedom of the general public. Accordingly, since patent rights are derived from the administrative action of the Patent Office, the Patent Office shall have the obligation to remedy any potential mistake or insufficient administrative performances at any a proper opportunity, such as the one mentioned here;
3. It is funny to introduce the concept of invalidation claims, something comparable to the court claims in a civil litigation in that the purpose of an invalidation proceeding is to successfully invalidate entirely a patent for the interests of the invalidation petitioner. Only in exceptional cases, i.e. normally because of inability to locate sufficient proofs, the petitioner would explicitly express that only a part of the patent claims is to be invalidated since normally, under such situation, the petitioner would still allege that all other claims are obvious in view of the prior art so that they should be cancelled as well. It is of a reasonable suspicion that there might be an undisclosed conspiracy as long as there is a partial invalidation petition through the above reasoning, although it might be possible that the petitioner desires to exercise the least efforts to stay away from the patent scope by citing the least required citations;
4. The law shall stipulate the regular instances rather than pay much efforts in introducing a system working adequately only exceptionally. Specifically, since more than 99% of invalidation proceedings are to cancel a patent entirely, it would be redundant and awkward to require the invalidation petitioner to learn how a lawyer makes the claims in a civil litigation. Further, since making an invalidation claim is not that important since such claim is normally not one rather than canceling the patent entirely, it is not that important to inspect or scrutinize whether a specific act of the Patent Office, the patentee or the petitioner has gone beyond the claims of the invalidation proceedings since any kind of acts coming from any of these three parties must relate to whether the patent in issue shall be cancelled or not;
5. Accordingly, the opinions of TIPO that the invalidation examination will subject to the limitation of the claims for the invalidation proceeding should not be correct in that a non-necessitated requirement of invalidation claim shall not limit or instruct how the invalidation examination should be rendered;
6. In addition, we could conclude there are logic or jurisprudent contradictions in the above TIPO’s opinions from its other opinions that the invalidation examination will not be confined by the invalidation briefs and/or proofs/evidence. If the invalidation claim is important and legally significant to be binding, which should be binding not only for the petitioner but also on the TIPO or the court, the invalidation examination shall rather than shall not be confined by the invalidation briefs and/or proofs/evidence in that the reasons and or evidence for the invalidation must be closely related to and depend on the invalidation claims. Specifically, since a specific invalidation claim originates from a specific reason or evidence, when the invalidation claim is held fixed or awarded with a legal binding effect, the reason or evidence must be correspondingly fixed or held unchangeable in order to secure the legal interests of either party. In other words, TIPO errs in holding that the invalidation claim is binding all parties on the one hand while taking for its expediency the position that its examination on the invalidation proceedings is not confined by the invalidation briefs and/or proofs/evidence on the other hand since the contradictions of these two holdings are self-explanatory. In addition, if the law holds the invalidation claims to be binding every body, the legal interests of an interested party could only be secured only when every party including TIPO or the court respect how the petitioner prepares the briefs and produces the evidence. Speaking otherwise, if the law sets forth or is to be interpreted that TIPO or the court would confirm they do not have the obligation to be confined by the briefs and/or the evidence the petitioner has submitted, the law would violate the constitution to allow TIPO to construe that the invalidation claims are binding all parties. Only under such construction, the rights of the petitioner to otherwise make invalidation claims under otherwise prepared briefs and/or otherwise produced evidence could then be secured;
7. The fact that the two invalidation proceedings could be incorporated for examination, as above-described, is simply because of the administrative expediency, and can never be ruled that their respective proofs/evidence could now be optionally combined by the examiner for examination, as alleged by TIPO. Even if TIPO bluffs to be generous to allow the opportunity for arguments in this respect by the patentee if a new combination of proofs is to be made thereby, this could never explain away either from logic or from jurisprudence that TIPO could optionally combine the evidence or apply the briefs by its own will since how the briefs are interpreted and/or how the evidence is combined are directly, mechanically and chemically intertwined with how the invalidation claims are made. Specifically, whether there is an opportunity to argue against how TIPO applies the evidence and/or interpret the briefs is irrelevant to the judgment of either whether the invalidation claims are binding to all parties or whether TIPO could optionally apply the briefs and/or combine the evidence;
8. The above reasoning will become more apparent if we get known to another opinion from TIPO that if either of the invalidation petitioners in different invalidation proceedings would like to appeal the office action rendered in the combined invalidation proceeding, it shall appeal the part belonging thereto. This will become strange or ridiculous if we have believed through the above reasoning that an optional interpretation of briefs and an optional combination of evidence will make up an optional invalidation claim rather than an officially legal claim in the legal proceedings that cannot optionally be changed or broadened. Since the law shall not allow an optional invalidation claim, such TIPO position shall not be viable. Further, a binding invalidation claim would not allow its framing briefs and evidence to be optionally applied or combined in order that the petitioner will not unduly suffer from legal disadvantages. This will become evident if we get known to the fact that it would be impossible for the either invalidation petitioner to ‘appeal the part belonging thereto’ as alleged by TIPO since after the optionally applied and combined invalidation examination made by TIPO, which part is belonging to oneself could not be known, because after the optionally applied and combined examination, the reasons and evidence combination manner might have been different from those of either petitioner. Then, how could the either petitioner, TIPO or the court get known to which part is belonging to whom and is subject to appeal if TIPO has optionally applied and combined the briefs and evidence in the invalidation proceeding?
Accordingly, our positions are as follows:
1. A first invalidation proceeding against a patent could be incorporated with a second invalidation proceeding against the same patent for examination for administrative expediency;
2. The invalidation proceeding need not have a claim comparable to that in a civil proceeding but to state that the patent in issue shall be cancelled;
3. Even if only a single invalidation proceeding is involved in, the proofs/evidence could be optionally combined ex officio by the examiner for examination, but both the patentee and the petitioner shall be allowed the opportunity for arguments each time when the examiner or the opposite party has a new combination of evidence;
4. If there are two independent claims in a patent while only one of them is invalidated, the office shall examine ex officio another claim for the purposes of administrative expediency and protecting the public interests;
5. The invalidation examination needs neither subject to the limitation of the invalidation claims nor be confined by the invalidation briefs and/or proofs/evidence;
6. If there is a combined invalidation proceeding, either invalidation petitioner could appeal the office action therefor, just like it had instituted the combined invalidation proceeding.