21 September, 2017
New interview rules for patent applications became effective on July 1, 2017.
The new interview rules for patent related applications came into effect on July 1, 2017. In the event that a party is seeking interview with the TIPO in a patent application, a written application for an interview must be submitted. The written application should specify the items to be discussed and the applicant’s explanation therefor in order to facilitate the communication during the interview. (Jill Kuo of Patent Department)
The amendment to the examination guidelines for a patent application involving inventive steps came into effect on July 1, 2017.
The TIPO amended the examination guidelines for a patent application involving inventive steps. The amendment came into effect on July 1, 2017. The amendment includes the following aspects:
- The amendment specifically indicates that while the term “a person with ordinary knowledge in the art” in general refers to one person, the term could nonetheless refer to a group of persons if it is deemed more appropriate upon considering the actual facts relevant to the art of the invention that a group of persons possesses the ordinary knowledge in the field of art.
- The definition of the term “easily accomplished” is amended to mean as follows: If a claimed invention could expectedly be accomplished by a person with ordinary knowledge in the art through logical analysis, inference or tests based upon existing prior arts and common knowledge at the time of filing, the invention as a whole would be deemed obvious and easily accomplishable as far as such person with ordinary knowledge in the art is concerned.
- The concept of primary prior art reference is introduced. A single prior art reference is selected among the prior art references suitable for determining the inventive steps, and is compared with the technical content of a claimed invention for differences. Such selected single prior art reference is referred to as “the primary prior art reference”, and all other prior art references used are referred to as the “other prior art references”. In principle, two or more prior art references shall not be combined to form the “primary prior art reference”.
- The principle to determine whether an inventive step could be “easily accomplished” is amended as follows: The subject that whether a person with ordinary knowledge in the art could be motivated and obviously capable to combine the relevant prior arts should be considered during the examination of inventive steps. The probability of combining multiple prior art references should first be determined. If such probability does exist, then the likelihood of forming a proof of lacking inventive steps will be evaluated, including synthetic considerations that the prior art teaches away from the claimed invention, the beneficial effects, the unexpected effects of the claimed invention and the solution of a long-term existing problem by the claimed invention, etc. If a logical and reasonable proof could be established that the claimed invention could be accomplished easily, the claimed invention will be determined to lack an inventive step. (Jill Kuo of Patent Department)
The TIPO announced statistics for the Accelerated Examination Program (AEP) during the period from January through June of 2017
From January through June 2017, there were 180 patent applications that took advantage of the AEP, of which 88 were filed by domestic applicants and 92 were filed by foreign applicants. The top four nationalities of foreign applicants were: Japan (36), U.S.A. (23), Germany (7), and Italy (5). (George Chen of Patent Department)
TIPO announced the Statistics of Patent Prosecution Highway (PPH) during the Period from January through June of 2017
According to the TIPO, 298 patent applications were made under the Taiwan-U.S. PPH from January through June 2017; and 268 patent applications were made under the Taiwan-Japan PPH during the same period. (George Chen of Patent Department)
The IP Court held that the time limit for submitting the evidentiary documents of the foreign depository institution is mandated by statute and could not be cured by a late submission.
Since the applicant of the invention patent application No. 104132343 failed to timely submit the required evidentiary documents of the foreign depository institution within 16 months after the earliest priority date, the TIPO ruled based on the latter part of Article 27-II of the Patent Act that the deposit of biological material be deemed to have not been made.
After the applicant made an unsuccessful administrative appeal, the matter was brought before the IP Court. By Judgement 105-Tsing-Chuan-Sue-Tze No. 88, the IP Court affirmed the TIPO’s ruling and held that, based on the legislative reasons of Article 27-III of the Patent Act (“Where priority is claimed under Article 28, the time limit set forth in the preceding paragraph shall be sixteen months after the earliest priority date”), the time limit for submitting the deposit should be a “statutory period” and not a “specified period”, and thus the applicant could not cure the failure to submit evidentiary documents of the foreign depository institution by a late submission. The Court held that the patent applicant’s late submission of evidentiary documents of the foreign depository institution failed to comply with the provision of Article 27-III of the Patent Act and that the TIPO’s ruling that “the deposit should be deemed to have not been made” was correct. (Jason Yang of Patent Department)
When new evidence presented in an administrative court action is sufficiently argued by the parties and the patentee(s) fails to file a post-grant amendment with the TIPO, the Supreme Administrative Court may reverse the TIPO’s original ruling denying the invalidation request.
The Supreme Administrative Court held in Judgement 106-Pan-Tze No. 266 that when the invalidation petitioner presented new evidence in support of the same ground for the revocation of the patent and such new evidence(s) was sufficiently argued by the parties, the Court should, in the event that the patentee still failed to file a post-grant amendment with the TIPO, reverse the TIPO’s original ruling denying the invalidation request as directed by the conclusion of the en banc meeting of the Supreme Administrative Court in April 2015 if the Court should find the invalidation request valid concerning the whole or part of the claims. In such event, the Supreme Administrative Court should order the TIPO to make a ruling granting the request for invalidation and revoking the subject patent accordingly. In addition, said conclusion of the en banc meeting of the Supreme Administrative Court should be applicable for invalidation rulings made by the TIPO regardless whether the rulings were made before or after the effective date of the amended Patent Act on January 1, 2013. (Eddie Shih of Patent department)
IP court held that the plaintiff of a trademark infringement case where the component of product was infringed upon should claim the prorated sale price of the entire product as damages.
The IP Court held in Annual Civil Judgement 105-Min-Shan-Sue-Tze No. 25 that where the product sold by defendant was clock and the infringed clock movement is a component thereof, the damages for the trademark infringement should be measured based on the ratio of the price of the movement to the price of the entire clock product rather than on the price of the entire clock product only, because the style, the design and the brand of clock products are also factors considered by consumers at the time of purchasing clocks even though the movements play a significant role in the clocks’ function.
The IP court indicated in the judgment that if the damages is measured based only on the sale price of the entire clock product, the plaintiff could be unjustly enriched by the award of damages beyond its trademark value. (Singing Hsieh of Trademark Department)
For further information, please contact:
C. Y. Huang, Partner, Tsar & Tsai Law Firm
CYHuang@TsarTsai.com.tw
