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Tsar & Tsai IP News is aimed at providing the readers and clients

  1. important recent changes in IP related laws and regulations in Taiwan,
  2. practical views and interpretations on IP related laws,
  3. important IP legal news and case developments, and
  4. information on recent IP related activities of Tsar & Tsai Law Firm. If you have any comments or questions, please feel free to contact us (Tel: 886-2-2781-4111; e-mail: patent@tsartsai.com.tw; TM@tsartsai.com.tw ).

Editors: George Shih / Lucy Chuang
Consultants: Jennifer Lin / Joyce I. Ho/ Jeanne Wang

The Ministry of Economic Affairs (“MOEA”) announces on June 24, 2020 to amend Article 17 and Article 39 of the Enforcement Rules of Patent Act

The MOEA promulgated the amendment to Article 17 and Article 39 of the Enforcement Rules of Patent Act on June 24, 2020.  According to the amended Article 17, the nucleotide or amino acid sequence listing for biotechnology- or pharmaceuticals-related invention patent applications may be submitted in electronic file useful for examination and search (such as TXT file or editable PDF file) without hard copy.  The amendment to Article 39 changes the time period for submitting the Third Party Opinion on invention patent applications to any time prior to examination decision being rendered regardless whether the applications are laid open.  (Jimmy Wu, Patent Department)

TIPO-KIPO PPH MOTTAINAI program became a permanent program as of July 1, 2020

In view of the success of the “TIPO-KIPO PPH MOTTAINAI” program, the parties agreed to make the program permanent beginning from July 1, 2020 to provide stable and convenient PPH services continuously for the applicants of both nations. (Lanya Chiu, Patent Department)

An invalidation petitioner challenging the patentee’s entitlement to apply for patent need not prove that the wordings of the patent claim or drawings are completely identical to the asserted evidence (Supreme Administrative Court’s Judgment 109-Pan-Zi No. 325)

Largan Precision Co. Ltd. (hereinafter, “Largan”) filed an invalidation petition with the Taiwan Intellectual Property Office (“TIPO”) on the ground that the patentee, Ability opto-Eletronics Technology Co., Ltd. (hereinafter, “AoET”),  is not entitled to apply for the patent No. M438469 (the “Patent”) because AoET applied for and obtained the Patent based upon the trade secret stolen by AoET’s employee from Largan. After TIPO denied the petition and the Intellectual Property Court (the “IP Court”) upheld TIPO’s decision, Largan appealed to the Supreme Administrative Court.  In the Supreme Administrative Court’s Judgment 109-Pan-Zi No. 325, the Court held that when examining Largan’s invalidation petition, instead of requiring the invalidation petitioner to prove that the invalidation evidence disclosed all of the technical features of the claims of the Patent, TIPO should examine whether there are “substantial” differences between the techniques recited in the claims of the Patent and the invalidation evidence (i.e., design drawings first implemented by the invalidation petitioner) in terms of creative concept, technical means, and efficacy.  Based on the facts found by the IP Court, i.e.,  the techniques recited in the claims of the Patent did not differ substantially from the techniques disclosed in the invalidation evidence, the inventors of the Patent were employees of the invalidation petitioner, and the patentee could not present evidence showing a reasonable creation process for the techniques recited in the claims of the Patent, the Court thus held that even though the content of the invalidation evidence was not completely identical in form to the wording of the claims or the drawings of the Patent, there was sufficient evidence to prove that the patentee did not have the right to apply for the Patent and the Patent should be invalidated.  TIPO’s previous ruling and the IP Court’s decision were overturned accordingly. (Ray Su, Patent Department)

The IP Court recited that disclosure-dedication rule is a bar to an infringement claim based on the doctrine of equivalents

The IP Court held in its civil judgment 108 Ming-Zhuan-Shang-Zi No. 38 that the “disclosure-dedication rule” has the effect of limiting the application of “the doctrine of equivalents”.  In the case, the only difference between the drug in dispute (“Drug”) and the patent in dispute (“Patent”) lies in the “low-substituted hydroxypropyl cellulose” (Drug) and “partially pregelatinized starch” (Patent), and the specification of the Patent clearly recites that “starch”, “low-substituted hydroxypropyl cellulose”, and “partially pregelatinized starch” were suitable disintegrating agents while the claims of the Patent recited only “partially pregelatinized starch” but not “low-substituted hydroxypropyl cellulose.”  The IP Court opined that based on the “disclosure-dedication rule”, the technical feature “low-substituted hydroxypropyl cellulose”, which is disclosed in the specification as a disintegrating agent but not included in the claims, should be considered as a dedication to the public, and the patentee cannot assert infringement on the basis that the Drug equivalently infringed the Patent for containing “low-substituted hydroxypropyl cellulose.”  It was further indicated in the judgment that once a patent is approved and published, the technical content disclosed in the specification or drawings but not included in the claims has been made available to the public and can be freely used by the public, which shall be excluded from the equivalent scope of the patent, irrespective of whether “the content is not claimed at the initial patent filing” or whether “the patent applicant has a subjective intent to dedicate”. (Sylvia Hong, Patent Department)

The IP Court upheld TIPO’s ruling that the mark “MILANO” could likely mislead the public to believe the place of origin of the designated goods “tobacco, cigarettes, smokers’ articles, matches” was “Milan”

In its Judgement 108-Shin-Shan-Su-Tze No. 143, the IP Court found that the mark “MILANO”, applied for registration by Gulbahar Tobacco International FZE (an UAE company), was an Italian word and the name of the metropolitan city of “Milan” in Italy, and that the designated goods “tobacco, cigarettes, smokers’ articles, matches” associated with the mark “MILANO” had no relation to the geographical region Milan.  Holding that the mark “MILANO” may mislead the public to believe that the place of origin of the designated goods “tobacco, cigarettes, smokers’ articles, matches” was “Milan”, the IP Court affirmed the TIPO’s ruling denying the application for trademark registration of the “MILANO” mark based upon Article 30-I-(8) of the Trademark Act. (Kevin Wei, Trademark Department)

The IP Court held that without consent, the use of the Chinese character mark (Shun Yi Ning) by the Defendant on “nutritional supplements” infringed upon the Chinese character mark (Shun Li Ning) registered by the Plaintiff on “pharmaceutical preparations”.

The Plaintiff filed a lawsuit, alleging that it was the owner of the Chinese character mark “Shun Li Ning” (Reg. No. 1165887) registered on the goods “pharmaceutical preparations, pharmaceuticals for the improvement of blood circulation”, that the Defendant used a similar Chinese character mark “Shun Yi Ning” on the goods “nutritional supplements” and sold them through on-line shopping websites and retail stores without its consent, and that Defendant’s act infringed upon its trademark right in relation to “Shun Li Ning” since Defendant’s use of its mark may cause confusion to the relevant consumers. The IP Court found the Defendant’s mark “Shun Yi Ning” was highly similar to the mark “Shun Li Ning” registered by the Plaintiff and well-known through extensive use, and noticed that the IPO had confirmed that “nutritional supplements” and “pharmaceutical preparations” were similar to each other.  Thus, the IP Court held that the Defendant’s acts constituted a trademark infringement as prescribed in Article 68-I-(3) of the Trademark Act, which provides that “using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers.”  However, the IP Court did not accept the Plaintiff’s assertion of damages based on Article 71-(3) of the Act that the Defendant should pay the Plaintiff the amount equal to 1,500 times of the unit retail price of the infringing products (NT$850 and NT$1,100 per box respectively).  Instead, the IP Court determined the total amount of damages should be 150 times of the unit retail price of the two products, i.e. NT$292,500.  In addition, in light of the probability that Defendant might continue using the contested mark on similar products and that the Plaintiff’s mark may be infringed again and needed to be protected in advance, the IP Court granted the Plaintiff’s request pursuant to Article 69-I & II of the Act and ordered that the Defendant refrain from using the wording similar to “Shun Li Ning” in advertisements, webpages or other marketing articles or using any wording similar to “Shun Li Ning” in any other marketing acts.  Moreover, the court ordered the Defendant to destroy or remove all advertisements, signboards, packages and cases containing the wording or image similar to “Shun Li Ning”.  However, the IP Court denied the Plaintiff’s requests for damages based on Articles 30 and 33 of Fair Trade Act and for placement of the relevant content of the judgment on Apple Daily newspapers, holding that Article 22-II of Fair Trade Act clearly provides that the Fair Trade Act shall no longer be applicable once the mark or any other symbol representing the entity’s products has been registered as a trademark,. (Jay You, Trademark Department)

MOEA rejected DIC’s administrative appeal of the TIPO’s ruling granting patent invalidation petition by Merck

Merck Patent GMBH (“Merck”) filed an invalidation petition with the TIPO on February 5, 2016 against Invention Patent No. I452122 (hereinafter, “the Patent”) of DIC Corporation (“DIC”) on the ground that the Patent lacked novelty and inventive step.  During the review of the petition, DIC filed several versions of post-grant amendments, and a hearing was eventually held by TIPO on October 24, 2019.  After four years from the filing of the petition, TIPO finally ruled that the DIC’s post-grant amendments should not be accepted and granted the invalidation petition on February 25, 2020.  DIC subsequently filed an administrative appeal of the TIPO’s ruling with the MOEA on April 1, 2020.  After considering DIC’s appellate brief and the TIPO’s rebuttal arguments, the MOEA denied DIC’s appeal.  Tsar & Tsai represented Merck in successfully invalidating aforementioned DIC’s Patent (Sylvia Hong, Patent Department)

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