本 期 提 要HEADLINES
Taiwan, European Union Sign Trademark Memorandum of Understanding
On 31 December 1999, Taiwan and the European Union signed a memorandum of understanding regarding the exchange of information relating to the protection of trademarks. Taiwan was represented by the Intellectual Property Office while the European Union was represented by the Office of Harmonization in the Internal Market. The agreement, which became effective on 1 January 2000, obligates the two parties to perform the following:
a. willingness to maintain continuous communication on the exchange of information relating to the modernization, harmonization, and development of trademark rights, in particular the exchange of information regarding legislation in force as well as legislative proposals and amendments which are anticipated;
b. provide each other with legal materials on specific subject matters upon request by the other party;
c. carry out joint consultations and discussions concerning the organization, collection, storing, and accessibility of their trademark documentation;
d. jointly establish mechanisms for technical cooperation in the field of trademarks, which shall mainly comprise of technical training and the organization of courses and seminars;
e. establish mechanisms for technical assistance and promotion, in particular the circulation of information regarding trademarks;
f. exchange views and experience on trademark search and examination standards; and
g. provide the other party with free copies of its official publications.
按美國軟體業者過去大多引用著作權作為保護其智慧財產權之手段，但自一九九八年聯邦巡迴上訴法院(U.S. Court of Appeals for the Federal Circuit)審查State Street Bank案時將專利權保護範圍擴大至商業方法後，從事電子商務業者開始大量向PTO申請專利保護，若干著名案件引起各界對PTO缺乏專業軟體人才及草率授與該種專利之疑慮。
U.S. Amends Business Methods Patent Examination System
Taiwan economic officials based at the Taipei Economic and Cultural Relations Office in the United States have issued a circular regarding changes that the U.S. Patent and Trademark Office (PTO) have announced. The PTO issued a press release stating its intent to revise the examination procedure for business method patent applications.
The U.S. software industry had traditionally used copyrights to protect their intellectual property. In the State Street Bank case in 1998, however, the U.S. Court of Appeals for the Federal Circuit expanded the scope of patent protection to include business methods. Thus, companies engaged in electronic commerce have submitted large numbers of business method patent applications to the PTO.
The PTO's press release stated that the PTO would revise the examination and approval guidelines for computer-related inventions, add a level of examination, and expand its collection sprior art.
IPO Proposes Revisions to Trademark Application Forms
The Intellectual Property Office recently held a public hearing on proposed changes to simplify trademark classification application forms. The proposals are part of the IPO's effort to simplify procedures, increase its level of service, and integrate the use of the Internet in its operations. The proposals contain the following two principle components:
a. Revising the contents and items of trademark application forms. The IPO modeled the revisions on the trademark application forms used by APEC and other countries, as well as considering the specific issues applicants face in Taiwan.
b. Use of the Internet. After the revised trademark classification form is put into use, the IPO plans to place the form on the Internet. At that time, the public may download the application form from the IPO's website.
IPO Announces Guidelines for Purchasing Foreign Patent Materials
The Intellectual Property Office recently issued guidelines governing the IPO's purchase of foreign patent materials on behalf of third parties in Taiwan. Under the guidelines, any Taiwan governmental organization, academic group, civic organization, or individual who wants to purchase foreign patent materials may authorize the IPO to purchase the materials. However, because of political considerations, purchases will not be available when postal relations are not established with the foreign country or at the time of application the IPO and the overseas publisher have signed a license agreement regarding duplication.
Work by the Anti-Counterfeiting Committee in February 2000
According to statistics released by the Anti-Counterfeiting Committee (ACC) of the Ministry of Economic Affairs, the ACC in February 2000 investigated 36 new trademark and place-of-origin cases involving the export of goods. During this month, 58 cases were handled by the ACC internally and 46 were referred to the Board of Foreign Trade for administrative action. In addition, of the counterfeit cases that were brought to the attention of the ACC by private companies, 4 were handled by the ACC and 2 were referred to other administrative agencies.
In addition, working in close cooperation with prosecutors, police, and investigators, the ACC coordinated raids in 74 IPR infringement cases. The ACC also assisted with 18 counterfeit trademark raids and 2 patent infringement raids. The raids resulted in the seizure of counterfeit goods worth NT$25,209,798.
In February 2000, the ACC also assisted the China External Trade Development Council to verify that products from Taiwan companies selected for overseas exhibition did not infringe intellectual property rights. The ACC also participated in 3 meetings related to counterfeit raids and intellectual property.
Results of IPR Protection Work by the National Police Administration in February 2000
In February 2000, the National Police Administration handled IPR-related investigations resulting in the referral of 218 cases involving 266 defendants to district court prosecutors on suspicion of infringement. Of these 218 cases, 68 defendants in 59 cases were suspected of trademark infringement, 14 defendants in 9 cases were suspected of patent infringement, and 184 defendants in 150 cases were suspected of copyright infringement. Seven defendants in 7 cases were suspected of infringing U.S.-owned copyright. The market value of counterfeit products seized during the investigations was estimated to be NT$292,101,478.
Opinions Issued on Power of Attorney Issue
The Judicial Yuan and the Ministry of Justice recently released opinions on the issue of authentication procedures for powers of attorney issued by U.S. companies for criminal prosecutions of intellectual property infringement cases in Taiwan. The respective opinions were as follows:
a. The Judicial Yuan instructed agencies under its jurisdiction a circular dated 27 April 2000 as follows: "Regarding powers of attorney of U.S. businesses retaining Taiwan lawyers to be their representatives in conducting prosecutions, if it is already sufficiently determined that the power of attorney is genuine, then authentication procedures are not required for the power of attorney."
b. The Ministry of Justice instructed agencies under its jurisdiction in a circular dated 5 May 2000 as follows: "If in the effective period to investigate a violation of intellectual property rights, a U.S. legal person authorizes a representative in Taiwan to institute a criminal prosecution of this type of case, it can be determined according to the information on hand that the power of attorney is genuine, then it is not necessary to order that the power of attorney be subject to authentication proceedings."
Taiwan Courts Sentence 9 Persons to at Least One Year in IPR Cases in February 2000
According to statistics released by the Ministry of Justice, of 147 defendants in copyright, trademark, and patent infringement cases in February 2000, 71 persons were sentenced to jail terms, received detention or were fined. Of the defendants sentenced to jail terms, 45 persons were sentenced to less than six months. Of these 45 persons, 6 were convicted of infringing U.S.-owned intellectual property. Seven persons were sentenced to no less than six months but no more than one year, of which 2 persons were convicted of infringing U.S.-owned intellectual property. Seven persons were sentenced to no less than one year but no more than two years while 2 persons were sentenced to no less than two years but no more than three years. Six persons received detention.