LEGAL NEWS AND CASE DEVLOPMENT

TIPO announced statistics for the Accelerated Examination Program (AEP) on Invention Patents during the period from January through December 2017

During the twelve months in 2017, there were 364 patent applications filed under the accelerated examination program (AEP), of which 189 were filed by domestic applicants and 175 were by foreign applicants. The top 4 foreign applicants by nationality were: Japan (79); U.S.A. (33); The Netherlands (14) and Germany (9).

Among the applications, 209 were filed under Category 1 (i.e., the corresponding application has been approved by a foreign patent authority after substantive examination), and the first office action in those matters (including examination opinions and final decisions) was issued in an average of 71.1 days. 11 applications were filed under Category 2 (i.e., the EPO, JPO or USPTO has issued an office action during substantive examination but has yet to approve the application’s foreign counterpart), and the first office action therein was issued in an average of 79.4 days. 110 applications were filed under Category 3 (i.e., the invention application is essential to commercial exploitation), and the first office action therein was issued in an average of 129.7 days. 34 applications were filed under Category 4 (i.e., inventions are related to green technologies), and the first office action therein was issued in an average of 97.2 days. 

TIPO-UKIPO Cooperative Program on Mutual Recognition of Deposit of Biological Materials has come into effect

On December 1, 2017, Taiwan and the United Kingdom signed an MOU on the deposit of biological materials for purposes of patent procedure, effective immediately. Under said program, when an applicant deposits the biological material involved in patent application to a depository institution designated either by the TIPO (the depository institution designated by the TIPO is Food Industry Research and Development Institute, “FIRDI”) or by the UKIPO and presents the deposit certificate issued by the depository institutions to the TIPO and/or the UKIPO, as the case may be, the TIPO and the UKIPO will both recognize the fact that the deposit has been made at a domestic depository institution. There is no need to make duplicate deposits. 

TIPO announced the statistics of Patent Prosecution Highway (PPH) during the period from January through December of 2017

During the 12 month period in 2017, there were 542 patent applications filed under the Taiwan-U.S. PPH; 471 applications filed under the Taiwan-Japan PPH; zero application filed under the Taiwan-Spain PPH; and 14 applications filed under the Taiwan- Korea PPH.

The IP Court held that the “earliest priority date” set forth in Paragraph 4 of Article 29 of the Patent Act should be interpreted to mean “the earliest priority date among a plurality of priority claims upon applying for the reinstatement”

The IP Court held in its Judgment 106-Hsin-Chuan-Su-Tze No. 57 that as the legal effect of “loss of priority” due to late submission of priority documents set forth in Article 29 of the Patent Act had been changed by the 2011 amendment of the Patent Act as such that “the priority claim should be deemed not having been made”, which amounts to the withdrawal of all priorities, when an applicant applies for reinstatement of priority claim pursuant to Paragraph 4 of Article 29 of the Patent Act, the “earliest priority date” should be re-determined and be interpreted to mean “the earliest priority date among a plurality of priority claims upon applying for the reinstatement”, so as to conform with the legislative intent of providing remedy to the applicant. 

A party who disputes the technical level of a person having ordinary knowledge in the art in an individual case should submit specific evidences.

According to the Supreme Administrative Court Judgment 106-Pan-Zi No. 651, when a party disputes with the “ordinary knowledge” in the art as to the invention and the “technical level” thereof on the filing date, evidence should be submitted to specifically prove such facts and their effects on the inventive step. Otherwise, it should be deemed that such facts had already been debated when the parties were arguing whether the patent at issue could be easily accomplished by the invalidation evidences, and that the party’s right to hearing was already protected and there was no surprising judgment. In addition, the Court noted that when the technical fields of plural evidence are completely irrelevant to each other, it typically lacks the motivation for combination of the evidences. The Court went on to explain that on the other hand, when there is a correlation between the technical fields of plural evidence, it is necessary to further consider the issues to be solved, the commonality on function and/or action produced, the teaching and suggestion from the plural evidences, etc.; and that only after such consideration, a determination could be made as to whether a person having ordinary knowledge in the art has a motive to combine the technical contents disclosed in the plural evidence. 

The IP Court held that the registration of the mark “AKA-ONI & AO-ONI and design” should be revoked since it is similar to Blue Way Company’s trademarks “(Blue Way Design)” and “JIZO Design” and for use on the same or highly similar goods, and hence is likely to cause confusion to the consumers

The IP Court held in its Judgment 106-Hsin-Shan-Su-Tze No. 43 that E-Min Industrial Co., Ltd.’s trademark “AKA-ONI & AO-ONI and design” was similar to Blue Way Company’s trademarks “(Blue Way Design)” and “JIZO Design” and that they were for used on the same or highly similar goods of “shirts, pants, sports shoes, etc.” in Class 25; and by virtue of the aforesaid factors, that the relevant consumers could be confused and were likely to identify that the goods associated with said trademarks were from the same source, or that the users thereof are affiliates by organization, license, franchise or other similar relationship.  The court held by virtue of the above finding that the registration of the opposed mark “AKA-ONI & AO-ONI and design” should be revoked based upon Article 30-I-(10) of the Trademark Act.  (Kevin Wei, Trademark Department)

Using another entity’s well-known trademark to be company name deemed infringement of trademark right

The IP Court held based upon Article 70-II of the Trademark Act that Defendant Show-Mark International Traveling Agent Co Ltd.’s use of 旺旺 (Wong-Wong), which was identical to the well-known trademark previously registered by Plaintiff Tsai Ho Want Enterprise Co., Ltd., as its company name without obtaining a consent from the Plaintiff would likely cause confusion to the relevant consumers and infringed upon the Plaintiff’s trademark right. The Court ordered the Defendant to file a petition with Taipei City Office of Commerce to change its company name to one which does not consist of the words旺旺. According to the Court, about 27 years before the Defendant was established in December 2000, the Plaintiff’s affiliate, I-Lan Foods Co. Ltd., already registered the trademark旺旺on products such as cookies. Since 1997, the Plaintiff itself also registered dozens of 旺旺 marks on various goods and services in different Classes in Taiwan and China, including one mark registered in 2005 on “traveling arrangement” in Class 39. The court found that the Plaintiff had been using this brand on its multiple businesses in medical, restaurant, hotel, property insurance and media fields, and had developed itself into a diversified business enterprise. In 2008, the Plaintiff’s mark旺旺was recognized as a famous trademark in China. Since 2009, said mark was also repeatedly selected by “The International Brand Value Investigation in Taiwan” held by the Bureau of Industry as one of the top ten international brands and recognized by the IP Court and TIPO as a well-known trademark. The Defendant’s argument that the Plaintiff’s 旺旺mark was only well-known in some specific industries irrelevant to its traveling-related services was rejected by the Court. The Plaintiff’s assertion that the Defendant violated Article 22-I-(2) of the Fair Trade Act was also rejected by the Court because that, according to the second Paragraph of this Article, the sign to be protected under the Article has been registered as a trademark, and that the protection thereof through the Trademark Act was sufficient and there was no need to refer to this Article in duplication. 

The Petitions and Appeals Committee of the Ministry of Economic Affairs (“PAC”) held that the opposed mark “” is similar to the cited marks “” and “SHIMANO XTR”, and the registration of the opposed mark designated on the same or similar goods should be revoked

The PAC ruled on December 19, 2017 that the letters “XTR” contained in the opposed mark “” were same as, and in, the cited marks “” and “SHIMANO XTR”, and the marks were designated to the same or similar goods, namely “bicycle”.  The PAC found that the mere difference between the marks were the design of the letters or the addition of few other letters; that the reputation represented by the cited marks had been known among the relevant consumers well before the registration date of the opposed mark; that since the parties were competitors in bicycle business and the related parts, the respondent had known the existence of the cited marks before it applied for the registration of the opposed mark; and that the respondent’s use of the highly similar foreign letters “XTR” as a part of the opposed mark and designation of the mark to the same or similar goods revealed the respondent’s apparent intent to counterfeit.  The PAC therefore reversed the TIPO’s denial of the opposition to registration of the opposed mark, and ruled that the registration of the opposed mark to the extent that the mark was designated to “bicycle” be revoked. 

The Supreme Administrative Court affirmed that Philips’ acts of setting the gauge of the CD-R specification but improperly maintaining the royalties violated the Taiwan Fair Trade Act

Koninklijke Philips N.V (“Philips”), Taiyo Yuden Co., Ltd. and Sony Corporation set the gauge of the CD-R specification in Orange Book, and commanded a global monopoly related to CD-R technologies by joint and package patent licensing. While the market conditions of CD-R products had been obviously changed, Philips et al. continued to maintain the original royalty calculation formula and refused to give the licensees any chance to negotiate the royalties. Consequently, Philips et al. had been fined and ordered to stop the unlawful act by the Taiwan Fair Trade Commission (“TFTC”) in 2001. After several administrative appeals by Philips, the TFTC rendered the decision No. Gung-Chu-#104027 on April 2, 2015, ordering Philips to pay NT$ 1.8 million dollars fines. Philips filed an appeal of said ruling to the IP Court. The IP Court rendered the judgment No. 104-Shing-Gung-Su-#1 on June 17, 2016, dismissing Philips’ appeal. The IP Court noted that “While a patentee is allowed to freely negotiate the royalties with licensee(s), the patentee would commit an unlawful act of monopoly misappropriation when it carries a monopoly power in a market and unilaterally sets the royalty rates in reliance on its monopoly status in the market and in disregard of the principle of supply and demand, and forces the licensees to accept such rates with no chance to negotiate.” The IP Court noted that the aforesaid analysis remains true even though the defendant is not allowed to interfere with the actual determination of the royalty rates under the principle of freedom of contract. Philips again appealed said IP Court’s judgment to the Supreme Administrative Court, but the appeal was dismissed by the Supreme Administrative Court’s judgment No. 106-Pan-#690 on December 14, 2017, and the judgment has eventually been finalized. 

The IP Court and Supreme Administrative Court upheld that the mark “” (myBook & design) for use on “computers, computer hardware, computer software” is similar to the mark “MY BOOK” in Class 9 prior-registered by Western Digital Technologies, Inc. and hence, the registration of the mark “” on those goods is likely to cause confusion to consumers and should be revoked. 

Tsar & Tsai assisted its client, Western Digital Technologies, Inc. (“WDT”), to successfully oppose to the registration of the mark “” (myBook & design) in the name of Taiwan Mobile Co., Ltd. (“Taiwan Mobile”) as to the goods “computers, computer hardware, computer software” by citing WDT’s “MY BOOK” mark in Class 9 which has been familiar to the local relevant consumers.  The IP Court ruled that the opposed mark “” conveys an impression equivalent to “myBook” and hence, is similar in concept and pronunciation to WDT’s cited mark “MY BOOK”.  The use of the opposed mark “” on the goods “computers, computer hardware, computer software”, which are the same or similar to those goods of WDT’s cited mark “MY BOOK”, is likely to cause confusion to the relevant consumers as to the source of goods.  As such, the registration of the opposed mark “” as to the goods “computers, computer hardware, computer software” should be revoked in accordance with Article 30-I-(10) of Trademark Act. 

The IP Court affirmed the Kaohsiung District Court’s decision to sentence Dairen Chemical Corporation’s former employee for seven and half years of imprisonment for misappropriating Dairen’s trade secrets.

Affirming the Kaohsiung District Court’s decision, the Intellectual Property Court held in January, 2018 that Dairen Chemical Corporation’s (“DCC”) former employee should be sentenced for seven years and 6 months of imprisonment for misappropriating DCC’s trade secrets with the intention to disclose to and use in his new employer in China, a competitor of DCC. This would be the first case where the court sentenced a defendant to imprisonment for misappropriating trade secrets with the intention to disclose and use overseas after the criminal punishment was added to Trade Secret Act in 2013. Tsar & Tsai Law Firm represented DCC, the complainant, throughout the criminal investigation and court proceedings. 

COMMENTARY

Brief Comment on Amendment to the Pharmaceutical Affairs Act

On December 29, 2017, the Legislative Yuan passed an amendment to the Pharmaceutical Affairs Act.  The amendment introduces a patent linkage system, with the hope that the system may resolve patent infringement disputes before generic drugs are released on the market, and that generic drug companies may design around.

In the future, the holder of a new drug permit is responsible to submit the relevant patent information of the new drug within 45 days of receipt of the new drug permit or of publication of patent grant, whichever is later.  The patent information which can be submitted includes those patents related to substances, compositions or formulations and medical uses.  For a new drug permit issued before the amended law comes into force, the holder may submit the relevant patent information within 3 months after the amended law comes into force.   In the case of a medical use invention, the claim number should also be specified.

An applicant for a generic drug permit should file a declaration concerning the listed patent(s) relating to the corresponding new drug when applying for the drug permit, certifying: (1) there is no listed patent information corresponding to such new drug; (2) the listed patent(s) relating to such new drug has expired; (3) the generic drug permit will be issued by the authority after the expiration of the listed patent(s) relating to such new drug; and (4) the listed patent(s) corresponding to such new drug should be invalidated or the generic drug applying for the permit does not infringe the listed patent(s) relating to such new drug.

The applicant of the generic drug permit who claims that the listed patent should be invalidated or is not infringed must notify the owner of the new drug permit, the patentee and exclusive licensee.  The patentee or exclusive licensee may file a lawsuit to clarify the infringement issue within 45 days of receipt of such notification.  The authority may continue to review the application for the generic drug permit, but should suspend the issuance of the permit for the generic drug for a period of 12 months, counted from the date of receiving such notification by the owner of the new drug permit, barring special circumstances such as a court’s finding that the patent is invalid or not infringed, settlement between the litigants, or expiration of the patent at issue.  The first applicant for the generic drug permit that challenges the validity of the listed patent(s) or declares non-infringement of the listed patent(s) will be granted a 12-month period for market exclusivity after receiving the drug permit. 

Finally, due to special nature of a new drug of non-new molecular entity, the new drug of non-new molecular entity is applicable not only to the provisions regarding submission of patent information for a new drug permit but also to the provisions of declaration procedure for a generic drug permit.