本 期 提 要HEADLINES
Patent Law Amendments According to Resolution of EDAC
The Patent Law was first promulgated by the National Government on May 29, 1944, and entered into force on January 1, 1949. Following 7 amendments, the present version was promulgated by order of the President on October 24, 2001 (Volume 9, Issue 19 of IPR News set out the main points of the most recent amendment). In coordination with Taiwan's entry to the WTO, certain amendments to the Patent Law were also promulgated previously on May 7, 1997, with the enforcement date yet to be determined by the Administrative Yuan.
The final report of the Economic Development Advisory Conference (EDAC) had reached a consensus on 322 reso
lutions, one of which was "Sound Examination Mechanisms for Intellectual Property Rights". In accordance with this resolution, Taiwan should enhance its prot
ection for intellectual property rights, create an environment that encourages innovations, and establish sound examination mechanisms for IPRs. The majority opinion also advised "accelerating decriminalization of IPR infringements, so as to forge an environ
ment of fair competition: the Patent Law, Copyright Law and other intellectual property rights laws should be decriminalized as soon as possible". As the Patent Law is one that involves international elements, Taiwan as a member of the international community should also pay close attention to regulatory systems in other nations, and seek to become consistent with int
ernational standards. Taking into account industrial developments within Taiwan, international regulatory trends and the need to further enhance the quality of patent examination, the IPO considered it necessary to further revise the present patent system. Therefore a further draft amendment to the Patent Law was proposed by the IPO and passed by the Administrative Yuan on November 28, 2001. On the same day the draft was submitted for deliberation by the Legislative Yu
an. Below are the main points of these amendments:
a.Clearly define calculation of time periodsCalculation of time periods will revise all such provisions to "from the date", and in principle define the time period as not including the first day unless otherwise specified (such as the term of patent right, which will include the first day). (amend Article 20)
b.Revise provisions involving novelty, inventive step and innovationDeterminations of novelty, inventive step and innovation affect the approval or rejection of a patent application, and have an enormous impact on people's rights and interests. Therefore, where the existing pro
visions contain omissions or are inadequate, insertions and/or amendments are made following reference to overseas examples. (amend Articles 22, 93 and 109)
c.Revise provisions concerning contents, supplements, amendments & corrections of specifications (amend Articles 26, 47, 63, 116 and 121)
d.Clearly itemize reasons for rejection of patent application Pursuant to Article 5 of the Code of Administrative Procedures, an administrative decision that rejects a patent application must be made in accordance with clear guidelines. Therefore the amendments will itemize all reasons contained in the Patent Law for rejecting a patent application, as guideline for patent examiners and applicants.(amend Articles 44, 96 and 119)
e.Abolish reexamination procedure Under the existing Article 40 of the Patent Law, an applicant may apply for reexamination where the application has been rejected. This prolongs the admini
strative process, results in wastage of administrative resources, and is also inconsistent with international practices. Therefore, having taken into account the new litigation system as well as overseas regulatory examples, the reexamination procedure under the Patent Law will now be abolished.(delete Article 40)
f.Abolish opposition procedure Under the existing Patent Law, public examination of patents can be categorized into the "opposition" procedure prior to issue of patent certificate, and "can
cellation" procedure after issue of patent certificate. As the opposition procedure is time and cost consuming, it results in prolonged uncertainties in whether the patent should be granted, and people may also utilize this mechanism to obstruct the applicant's receipt of the patent. Clearly this represents a loophole in the protection offered to patent owners. In addition, an opposition action under the present system may be raised on roughly the same grounds as a cancellation, and the procedures, remedies and appeal avenues applicable are the same in both. There is no practicable reason for their coexistence. Accordingly the amendments will abolish the opposition procedure, integrate the grounds for opposition and cancellation actions, and include the grounds for opposition within the grounds for cancellation, so as to retain the spirit of public examination. In this way the patent litigation procedures will be simplified, and the rights and interests of parties will be ascertained much sooner. (delete Article 41)
g.Revise timing for issue of patentThe amendments will provide that an applicant may pay the relevant fees and obtain the patent right, immediately upon the application being approved. (amend Articles 50, 100 and 112)
h.Insert provisions concerning examination of cancellation actionsUnder the existing Patent Law, examination procedures for cancellation actions are the same as those applicable to opposition actions. As the opposition action process will be abolished by these amendments, it is appropriate to insert new provisions concerning examination procedures applicable to cancellation actions. (amend Articles 68 to 71)
i.Delete provisions concerning labeling of patented goods & related penalties Under the existing Patent Law, the labeling of patent rights must not exceed the scope of the patent. Goods that are not patented, or are not manufactured by a patented process, must not contain labels that allude to grant of patent, or that mislead consumers into believing there has been a grant of patent. A violation of these provisions will incur a criminal penalty. However, matters such as how patented goods should be labeled, truth of such labels, and whether there is a deceitful act or infringing act are all matters sufficiently regulated by the Criminal Code, the Civil Code (concerning infringement) and the Fair Trade Law. Accordingly, it is appropriate to delete Articles 83 and 130 of the existing Patent Law.(delete Articles 83 and 130)
j.Revise provisions concerning reduction/exemption of patent fees(amend Article 82)
k.Examination as to form for utility model patents
As the technical complexity of utility model patents is lower than other forms of patents, other major countries usually adopt examination procedures that merely examine as to compliance in form, rather than substantive examinations. This enable utility model patents to be granted as early as possible. Accordingly these amendments also make this change (amend Artic
les 96 to 98)
l.Insert technical report for utility model patentsAs the new "examination as to form" procedure for utility model patents no longer conduct substantive examinations as to their novelty and inventive step elements, there may be greater instability and uncertainty in the contents of these patents. Therefore, having taken into account overseas regulatory examples, these amendments introduce a technical report system for utility model patents. Any person may apply to the specialized patent authority for a utility model patent technical report, after the patent has been published in the official gazette. In addition, in order to prevent patent owners from abusing this system, and endangering the technological exploitation and R&D of third parties, utility model patent owners must produce the technical report prepared by the specialized patent authority, prior to exercising the rights of a utility patent owner. (amend Article 102 to 104)
m.Abolish criminal penalties for utility model and new design patentsThe majority opinion of the EDAC advised "accelerating decriminalization of IPR infringements, so as to forge an environment of fair competition: the Patent Law, Copyright Law and other intellectual property rights laws should be decriminalized as soon as possible". The present Patent Law is also criticized for being inconsistent in decriminalizing infringements to invention patents, but retaining criminal penaltyes for utility models and new design patents. It is unreasonable, as well as unbalanced, to remove criminal liability for infringing invention patents, which are of greater technological complexity, while retaining criminal liability for utility models and new design patents, which are of lesser technological complexity. Further, the present amendments will adopt an "examination as to form" system for utility model patents, and there will be uncertainty in whether a utility model patent application truly meets the substantive criteria for a patent. If criminal penalties were retained, given that criminal litigation is often used to exert pressure on competitors, such a system may cause irreparable damage to defendants. Therefore utility model and new design patent infringements will now all be resolved by civil procedures, so as to remove the existing imbalance in penalties for different violations, and to prevent patent owners from using criminal procedures to restrict industrial development. (delete Articles 125, 126, 128, 129)
n.Legal basis for outsourcing patent examination procedures(amend Article 133)
o.Insert transitional provisionsThe present amendments will involve revolutionary ch
anges to the patent system, including the abolishment of the reexamination and opposition systems, "examination as to form" and technical reports utility model patents and so on. Therefore it is necessary to insert transitional provisions for the transition period be
tween enforcement of old and new laws. (amend Articles 137 and 138)For a crossreference table of the Patent Law and its amendments, readers may go to the website of the IPO at:http://www.moeaipo.gov.tw/news/ShowNewsContent.asp?otype=1&postnum=822&from=board.
本案申訴人為德商雨果伯斯公司(Hugo Boss,Inc.)，其主張台亞彩色製版股份有限公司所註冊的<boss.com.tw>網域名稱，其特取部分<boss>與該公司之<BOSS>、<HUGO BOSS>等商標相同或近似，而有所混淆。且「boss」一詞已因申訴人之反覆使用，成為一頗具顯著性、著名性的商標，並已獲我國商標註冊之申請許可。申訴人並認為註冊人覬覦申訴人商標之知名度，誤導一般消費者至其網站瀏覽，進而獲取商業利益。
Decision Issued for Domain Name Dispute over <boss.com.tw>
The dispute over use of the <boss.com.tw> domain name was handled by the STLC, and the panel of experts delivered its decision on September 2, 2001. The panel held that the original registrant, Taiya Color Printing Co., Ltd., may continue to use this domain name.
The complainant in this case was the German company Hugo Boss, Inc., who submitted that the core part of the domain name <boss.com.tw> registered by Taiya was identical or similar to Hugo Boss' registered trademarks "BOSS" and "HUGO BOSS", and may cause confusion to the public. In addition, the word "BOSS" has been used extensively by the complainant, so that it has become a distinctive and famous trademark. It is also a registered trademark in Taiwan. The complainant submitted that the registrant is seeking to freeride on the fame of the complainant's trademark, and obtain commercial gain by misleading general consumers into viewing its website.
However, the registrant submitted that it had designed a "博仕網" (pronounced "bo shi wang") website as far back as July 2000. Further, it had never used the complainant's name, or any other similar or misleading trademarks or text to engage in commercial activities. Its own website did not market any public or hidden items that are identical or similar to business items for which the complainant's is registered. The services to be provided by the registrant via the website are related to assisting ordinary businesses to open their own Eshops. Therefore it is proper for the registrant to register the name "boss".
The expert panel in this case was led by Professor Wang YuChi of the Graduate School of Information and Social Studies at Yuan Ze University. Professor Wang pointed out that domain name dispute resolution is primarily handled by means of written submissions, and the panel of experts reaches its decision based on the facts and evidence submitted by the parties. The complainant must provide sufficient proof to show that all three essential elements for a successful complaint are present. The panel held that although the core part "boss" of the domain name <boss.com.tw> is similar to the complainant's trademark, and may cause confusion, the complainant had failed to submit sufficient evidence to support the presence of the other two elements.
In its decision, the panel indicated that there is merit in the registrant's argument that its use or prospective use of the said domain name is in good faith. Insofar as whether a registration is in bad faith under Article 5, Paragraph 3, Subparagraphs 2 and 4 of the dispute resolution rules, the panel believed that the complainant had failed to prove that the registrant had a subjective intention to prevent the complainant from using the said domain name. Objectively speaking, the registrant's formal registration of the domain name naturally precludes other people from using the mark, as this is an inevitable result of registration; however, this fact is insufficient to prove that the registrant had acted in "bad faith". Although the complainant has proven that its registered trademark is an internationally famous trademark, there is also proper cause for the registrant choosing the English word "boss" to create a website that will assist ordinary companies to open Eshops, and to provide businesses with information systems necessary for establishing an Ecommerce environment. The panel held that the registrant had no subjective intention to create a confusion with the complainant's trademark, in order to derive commercial gains by attracting or misleading Internet users to view the registrant's website.
Based on the above, the panel held that the case did not satisfy the three elements specified in the dispute resolution rules. Accordingly the complaint was dismissed.