本 期 提 要HEADLINES
法 規 報 導
Laws and Regulations
Patent Opposition, Cancellation, and Ex officio Examination Standards Enforced
On 10 July 2000, regulations governing the examination standards of patent opposition, cancellation and ex officio actions which were drafted by the Intellectual Property Office were enforced. The regulations clarify and govern the following matters:
a. Intent of related laws and regulations;
b. Qualifications of opposition petitioners and cancellation petitioners; time periods for opposition and cancellation actions; determination of concerned parties,
c. Grounds for instituting opposition and cancellation actions, grounds and timing for review of ex officio actions;
d. Recording and amendment of reasons and evidence for opposition and cancellation actions;
e. Principle of non-repetition;
f. Examination matters for opposition, cancellation, and ex officio actions, including:
i. defense statements;
ii. designation and withdrawal of examiners;
iii. written statements of examination reasons, examination investigation, right of clarification;
iv. questioning of parties at the IPO; submission of patent models and samples for experimentation; amendment and correction of diagrams;
v. evidentiary standards;
vi. determination of evidence;
vii. re-examination of invalidation decisions; affirmed examinations; relationship between affirmed invalidation decisions and patent infringement litigation.
IPO Issues Rules on Administrative Appeals
The IPR News in Volume 8, No. 13 reported on the 1 July 2000 implementation by the Ministry of Economic Affairs (MOEA) of a new system to govern administrative appeals. Pursuant to the new system, the MOEA drafted regulations governing procedures for appeals within the MOEA for three new types of administrative appeal procedures: review of files, statement of oral opinions, and oral arguments. The MOEA's Intellectual Property Office (IPO) recently issued the following rules applicable to patent and trademark applications and to the IPO relating to these new regulations:
a. Appeal applications and amendments
i. As of 1 July 2000, originals and copies of appeal applications must be submitted directly to the IPO. It is not necessary to submit copies separately to the MOEA.
ii. After the IPO forwards application which do not contain statements of reasons to the MOEA, the MOEA will according to Article 62 of the Law of Administrative Appeal notify applicants to amend the applications. Upon amendment, the original and copies of statements of reasons must be submitted to the IPO to enable the IPO to provide a written response.
iii. Appeal applications filed by agents must include original powers of attorney. Applications without powers of attorney must be amended within the time period specified by the MOEA.
b. Attachments to originals and copies of the appeal application if composed in Word-format files must be submitted on computer disk with the application to the IPO or sent by e-mail to the IPO with the name of the sender and date of transmission.
c. In order to avoid making timely notification of deadlines for amendments, the IPO shall designate a person charged with accepting appeal applications.
d. The IPO will take the initiative to ask the parties whether they have the intention of filing an appeal if the parties are not satisfied with IPO decisions.
e. If an appeal application is not in conformance with procedural requirements but includes a statement of reasons, the IPO will still accept the application under its own legal procedures.
f. When the MOEA invalidates a decision, the IPO shall comply with the time designated in the appeal decision to make another decision on the matter. The IPO shall forward a copy of the subsequent decision to the MOEA.
IPO Requires Japanese Names on Patent Applications Written in Complex Chinese Characters
The Patent Law and the Patent Law Enforcement Rules provide that documents required to be submitted with patent applications must be written in Chinese. Moreover, applications which include translated scientific terms must also include the original terms in the foreign languages. In addition, the standards set by the National Institute for Compilation and Translation shall apply to determine the correct translation of foreign terms. This is provided in Paragraph 1 of Article 14 of the Patent Law Enforcement Rules. Recently, however, applications from Japan are often not in accordance with the law because names are not translated into complex Chinese characters. Because of this situation, the Intellectual Property Office recently announced that the names of Japanese applicants and inventors must be translated into complex Chinese characters. If Japanese characters can not be written in Chinese according to the regulations, the IPO when necessary shall upon its own initiative change a Chinese character key, so as to ensure that the information in a computer file is correct.
IPO Releases Draft Regulations on Patent Application Supplements, Amendments, and Corrections
The Intellectual Property Office recently released draft examination standards governing the supplement, amendment, and correction of specifications and drawings in invention patent and new utility model patent applications. A public hearing regarding these draft standards was scheduled for 31 August 2000. The draft standards govern the following items:
a. Clarification of the intent of the following Patent Law articles: 44-1; 44-4; 45-2; 67; 73 and 105.
b. Supplement, amendment, and corrections made prior or after patent applications are approved and published:
i. Timing of the supplement, amendment, or correction.
ii. Items that may be supplemented, amended, or corrected;
iii. Determination of substantial changes;
iv. Effect of supplement, amendment, or correction;
v. Items of importance during examination.
司 法 報 導
Courts Sentence 59 Persons to Terms of One Year or More in Copyright Cases During Second Quarter of 2000
According to statistics released by the Ministry of Justice, from April through June 2000, 189 persons were convicted of Copyright Law violations in affirmed judgments under indictments issued by Taiwan district court prosecutors. Of these 189 persons, 120 received prison terms of six months or less. Nine persons were sentenced to at least six months but no more than one year, and 59 persons were sentenced to at least one year but no more than two years.
Courts Sentence 15 Persons to at Least One Year in IPR Cases in May 2000
According to statistics released by the Ministry of Justice, of 220 defendants in copyright, trademark, and patent infringement cases in May 2000, 105 persons were sentenced to jail terms, received detention or were fined. Of the defendants sentenced to jail terms, 75 persons were sentenced to less than six months. Of these 75 persons, 5 were convicted of infringing U.S.-owned intellectual property. Five persons were sentenced to no less than six months but no more than one year while 15 persons were sentenced to no less than one year but no more than two years. Seven persons received detention.