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11 April, 2017
1 – Add an exception to the general rule so that various post-grant amendments would not be deemed withdrawn in an invalidation proceeding
In order to avoid inconsistency among several post-grant amendments in the same invalidation case, in general only the last filed amendment will be examined regardless of the content of the various amendments. However, if the various amendments are not duplicate, inconsistent or ambiguous, the patentee’s true intent should be explored as a principal, and the amendments will be combined for examination.
2 – Add a provision concerning the invalidation petitioner’s right of explanation when an patent applicant files an application for invention and a utility model for the same creation on the same date (i.e. double filing for one creation)
In an invalidation proceeding made on the ground of violating double filing for one creation, the petitioner often incorrectly bases the petition upon Article 31 of the Patent Act and uses model utility patent of the same creation as supporting evidence. To protect the petitioner’s right, the petitioner should be given the opportunity to exercise the right of explanation under this circumstance to correctly base the petition upon Article 32 of the Patent Act.
3 – Add provisions concerning the Internet investigation and foreign language evidence collection
Expressly stipulate that the examiner notify relevant party to submit supplementary evidence or conduct investigation on own authority when there is a question regarding the public knowledge of Internet information or the date or truthfulness of the publication. In addition, if the evidence is in foreign language, the petitioner should provide a Chinese translation of the evidence or a relevant section thereof.
Amendment to Patent Examination Guideline as for Post-Grant Amendment
1 – Change the method of determination concerning whether an addition of technical feature constitutes a “substantive change”
The Patent Act provides that the scope of patent claims as published cannot be expanded or changed substantively. The amended Patent Examination Guidance changes the method of determining whether an added technical feature constitutes a substantive change to the scope of patent claims at time of publication. The revised Guidance now bases the determination upon whether the invention with post-grant change achieves the “inventive purpose” of the pre-grant claims. instead of whether the technical feature is pertains to a generic or specific form of, or a further definition of the original feature.
2 – Broaden the aspect of post-grant amendment
The Patent Act provides that clarification of ambiguous statements is an allowed aspect of post-grant amendment. The amended Patent Examination Guidance expressly provides that a post-grant amendment rewriting an reference to a claim into an independent claim item for purpose of easy understanding shall be allowed.
Amendment to Patent Act regarding the expansion of grace period
On January 18, 2017, the President promulgated the amendments to Patent Act that, wherein the patent grace period is expanded from 6 months to 12 months. According to the amended Act, the fact that a patent application filed within 12 months after the content thereof is published, either according to or against the applicant’s intention, shall not by itself result in denial of the invention patent or utility model patent. This amendment will become effective on a date to be set by the Executive Yuan.
The IP Court held that in addition to the functional purpose, the appearance and shape of an article having considerable designs can be patentable.
The IP Court held in its decision dated December 9, 2016 that if the appearance and shape of an article, in addition to the functional purpose, feature considerable designs and produce certain visual effects, such appearance and shape will be considered a creation for visual demands and not mere functional technical features, over which a design patent can still be granted. (Patent Department, Eddie Shih)
The Petitions and Appeals Committee of Ministry of the MOEA sustained TIPO’s rejection decision on the ground that the trademark “COOL JAPAN” could mislead the public to believe that the services provided was from Japan
In an appeal decision rendered on December 7, 2016, the Petitions and Appeals Committee of Ministry of Economic Affairs (MOEA) found that the trademark “COOL JAPAN” filed by the appellant for use on the services “hosting computer web sites; provide information service for a wide range of areas via global computer network; planning and construction of web sites; Software as a Service [SaaS]; provide service for temporary use of non-downloadable computer software” in Class 42 is likely to cause the consumers to associate said services with the products/services provided by the government of Japan for promotion of “COOL JAPAN” pop culture industries and likely to mislead the public as to the nature, quality, or place of origin of the services. Based on the such findings, the Petitions and Appeals Committee of MOEA sustained the Taiwan Intellectual Property Office’s (TIPO) rejection decision and concluded that the mark “COOL JAPAN” should not be approved for registration pursuant to Article 30-I-(8) of the Trademark Act. (Trademark Department Kevin Wei)
For further information, please contact:
Jennifer Lin, Partner, Tsar & Tsai Law Firm
jenniferLin@TsarTsai.com.tw
