VOL. 18 NO. 11 NOV 16, 2010 http://www.industry.net.tw http://www.patent.org.tw
Measures
Measures
1
Taiwan and Italy Signed MOU to Promote IPR Awareness and
Enforcement.
Taiwan and Mainland China Will Start Accepting Claims of Priority Rights on
November 22, 2010.
On November 4, 2010, TIPO Director General Mei-hua Wang and Italian PTO Director General Avvo Loredana Gulino signed the “Memorandum of Understanding between the Taiwan Intellectual Property Office and the Directorate General for Combating Counterfeiting – Italian Patent and Trademark Office on the Common Purpose of Promoting the Awareness and Enforcement of Intellectual Property Rights” in Taipei. Italy is the fourth nation in the European region to have signed the MOU with TIPO after France, Spain and Czech Republic.
Cross-strait IPR Agreement was signed on June 29, 2010 and became effective on September 12of the same year. Since then, the public has been anticipating the timing as to when Taiwan and Mainland China will start accepting the claims of priority rights to patents, trademarks and plant varieties. The responsible authorities have finished adjusting internal procedures and decided to accept claims of priority rights on November 22, 2010.
The acceptable date for the first application on which the priority right is claimed is September 12, 2010, which is the effective date of the IPR Agreement.
The MOU mainly covers staff visits between the two Offices, exchange of practical experiences, exchange of information and service channels as well as co-hosting seminars and other activities. It is believed that the signing of the MOU will facilitate the interaction and exchange of information between the two Offices in the future, thereby strengthening the cooperation in innovation to improve economic prosperity and development in the two nations.
Since observing mutual recognition of priority rights to patents, trademarks and plant varieties involves adjustments of internal procedures in Taiwan and Mainland China, both parties have been engaged in numerous communications, negotiations and proper preparations. With the cooperation of the Chinese government, the responsible authority has been actively adjusting and amending the internal operations, including amending the current regulations on examining the applications filed by applicants in Taiwan. As a result, both parties can announce the acceptance of claims within merely two months after the effective date of the Agreement.
In order to improve the relationship with the European countries, TIPO has actively promoted exchange of information with them, hoping to develop a closer relationship with these countries.
2 Additionally, with respect to the copyright authentication service directly provided in Taiwan, the Chinese government indicated that as soon as the relevant procedures are complete, Taiwan Copyright Protection Association can start handling the relevant authentication procedures.
TIPO will soon make a public announcement to allow the public to understand the enforcement result and relevant details of the IPR Agreement.
Measures
TIPO Announced the Summary of
“Symposium on Applicant Status in
Patent Application and Handling
Principles Before and After Amendment.＂
On October 25, 2010, TIPO announced the summary of “Symposium on Applicant Status in Patent Application and Handling Principles Before and After amendment,” including the comments received from the public. The draft amendment to the Examination Guidelines is prepared accordingly.
With respect to the handling procedures for adding applicants, TIPO has amended the draft such that an assignment of the patent application right shall be made in order to add additional applicants after the application has been filed in reference to the practice of the European Patent Office. With respect to the handling procedures for removing applicants, TIPO has amended the draft such that a correction can be made to a mistake made by the applicant to remove an applicant provided that the applicant can provide legal evidentiary documents.
With respect to the standard for determining whether a mistake is made by the applicant, TIPO responded that an applicant requests to make a
correction to a mistake means, on a case by case basis, the mistake can be proven without changing the entity of the application. The request shall be allowed in such case. If the entity of the application has been changed, legal assignment and evidentiary documents shall be filed to complete the assignment recordation. Also, if, for example, the applicant is XX bio pharmaceutical company, but it is mistakenly filed as XX pharmaceutical company, or if the applicant is Kuo-Show Technology Co. Ltd., but it is mistakenly filed as Ho-Show Technology Co.
Ltd., can a correction be made to the applicant’s name? TIPO responded that in the case where a mistake is made to the name of the applicant, if the document is filed with the application and proof of mistake can be provided, then a correction can be made. If it can be inferred from the ID or address listed in the application that a mistake was made to the name of the applicant, then the mistake can be corrected. Additionally, in accordance with Article 34 of the Patent Act, when an invention patent is granted upon application filed by a person other than the person entitled to file such application, the filing date of the application filed by the person not entitled to file the application shall be taken as the filing date of the application filed by the person entitled to file the application if the person entitled to file the patent application files an invalidation action against the patent application filed by the person not entitled to file the application. However, according to TIPO’s response, if the person not entitled to file the patent application wishes to make a correction to the mistake at a later time, it is possible that the filing date will be changed. Would it be too harsh on the application in such case?
TIPO responded that Article 34 of the Patent Act is an exception rule, which is to give the person entitled to file the patent application a chance to protect his/her rights when the patent application is granted to a person not entitled to file the patent application without the knowledge of the person who is. The examples provided in the handling procedures are taken in the case where the person not entitled to file
3 the patent application makes an expression to file the application. Such case does not satisfy the regulations stipulated in the Patent Act, and thus is not applicable to Article 34 of the same Act.
The content of this amendment has been made available to the public through public hearings, seminars, and on the website since July 2010.
“Section One – Formality Examination and Patent Right Management – Chapter Two – Invention Patent 1.2 and Patent Application Request Form”
will be amended and announced soon. The amendment will become effective on January 1, 2011.
Measures
TIPO Is To Clear Invention Patent On The Docket In Full Speed.
In order to finish the examination of close to 140 thousand invention patent applications that are currently on the docket, TIPO has increased its examination speed. In 2009, 23,382 cases were closed, which was a 42% increase as compared to the 16,455 cases closed in 2008. Between January and October, 2010, 23,562 cases have been closed, which is a 27% increase when compared with the 18,494 cases closed in 2009. Also, the Executive Yuan has approved the “Plan to Clear Patent Applications on the Docket.” If the measures of the Plan work as scheduled, 304,700 cases are expected to close within 6 years between 2010 and 2015, thereby decreasing the patent applications on the docket to 75,946 cases.
The average examination time will be reduced to under 24 months.
As the research and development activities increase, the number of patent applications filed in Taiwan has increased yearly to 51,909 cases in 2008 from
22,161 cases in 1999 with the exception of 46,646 cases in 2009 during the financial crisis. As the human power in TIPO is limited, the number of external examiners is reduced to 80 people in 2007 from 780 people in 2002. As a result, the number of patent applications filed is higher than the number of patent applications examined year after year. As of the end of October 2010, the number of pending patent applications has increased to 149,862 cases, increasing the average examination time to 40.7 months.
In order to increase the examination speed, TIPO has adopted numerous measures, such as
“Enhancement of Examiner’s Annual Applications Examined,” “Introduction of Fee Return on Revoked Patent Applications,” “Claim by Claim Examination Fee,” and “Increase Reference to Foreign Patent Search and Examination Result.”
As such, the average number of applications examined annually has increased from 67 cases in 2008 to 89 cases in 2009 and to 105 cases in 2010.
In terms of applications examined annually, 16,445 cases examined in 2008 were increased to 23,382 cases in 2009. The number of applications to be examined is expected to reach 27,200 cases in 2010.
To further increase the examination speed and thus resolve the shortage of examiners, the Executive Yuan has approved the Plan to Clear Patent Applications on the Docket on June 24, 2010.
TIPO has introduced 97 alternative military servants to assist in patent search since August 2010. The number of applications examined is expected to increase in 2011. Additionally, with respect to the three previous measures, namely to fill the 39 headcounts in TIPO, to add 170 examiners for a 5-year term, to increase external examiners to assist in patent search, to establish external organizations to assist in trivial businesses, to establish patent development fund, the current Articles 7, 16 and 17 of the TIPO Organization Act must be amended before the measures can be implemented. The amendment to the TIPO Organization Act has been
submitted to the Legislative Yuan on June 7, 2010 for its review. Should the legislative procedures be completed in this session, the number of applications examined can be increased to 41,000 cases in 2011. Additionally, the number of applications reviewed can be higher than that filed starting 2012. TIPO is expected to examine
304,700 cases within 6 years between 2010 to 2015, thereby reducing the number of pending applications to 75,946 cases and reducing the average examination time to under 24 months.
TAIWAN IPR NEWS
PUBLISHER／PRESTON W. CHEN PUBLISHING AGENCY／
EDITOR-IN-CHIEF／LIEN-SHENG TSAI INTELLECTUAL PROPERTY COMMITTEE,
DEPUTY EDITOR-IN-CHIEF／JOSEPH C. CHEN CHINESE NATIONAL FEDERATION OF INDUSTRIES EDITORS／FRANCK LIN‧ANFERY HSU‧ALAN LAI ADDRESS／12TH FL., 390, FU HSING S. RD., SEC. 1,
TRANSLATOR／SUZY SHOUNG TAIPEI, TAIWAN, R.O.C.
TEL／886-2-27033500 FAX／886-2-27042477 E-MAIL／intell@cnfi.org.tw
THIS PUBLICATION IS FUNDED BY
THE GOVERNMENT INFORMATION OFFICE AND THE INTELLECTUAL PROPERTY OFFICE, MOEA
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