"*~FAQs for Patent~*"

Photographs or Drawings for Design

  It will be possible to provide the required photographs of the designs in lieu of the design drawings. Photographs of a design need to conform to the required elevational views, i.e. the article¡¦s regular 7 photographs including 6-side and perspective views. Nevertheless, if the front, back, left and right side views are not critical for an article, e.g. a table covering, the 4-side views could be dispensed with. In addition, the phrase that the left/front view is a mirror of the right/rear view could be used for saving a view.

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Copyright

  Although in theory, the copyright automatically generates once a work is created, since Taiwan is not a party to the Berne Convention, a work may automatically generate a copyright only when it is published in Taiwan within 30 days after its first publication all over the world, or the home country of the author has a special arrangement with Taiwan. For example, according to the Sino-US Friendship Treaty entered into between the ROC Government (formerly China, now Taiwan) and the US before the ROC Government retreated to Taiwan, the art work of a US national will directly enjoy the copyright protection under the Copyright Law here without any recordal before the Government. That is, it will be unnecessary for the Client to seek any official recordal/registration for the copyright but the client can claim against the infringement. A recordal/registration in Taiwan is exercised only for the purposes of proving a copyright has existed if the owner is not confident it could produce evidence to show when the work has been created when there is a suit. It is clear, however, the copyright will be not enough or be improper to protect a design product, e.g. made of woven vinyl so that the design protection to secure concrete rights for the work is suggestible.

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Forms PCT/IB/326 & PCT/IB/373 and PCT/IB/408 & PCT/IB/409 in Mainland China

  Under PRC patent practices, Forms PCT/IB/326 and PCT/IB/373 (International Preliminary Report on Patentability (IPRP)) are different from Forms PCT/IB/408 and PCT/IB/409 (International Preliminary Examination Report (IPER)) even though they are both issued from the WIPO. The formers are issued by the International Search Organization/Office without the WIPO-accepted final amendments during the international phase.

  As such, if an application was filed with the amended Claims under Article 34 of PCT, it will be necessary to provide the aforementioned IPER together with the accepted final amended Claims to support the claimed basic Article. Otherwise, the amended Claims filed upon entering into the national phase will be rejected.

  Alternatively, we can petition the time extension for submitting the IPER or change the basic Article of the amendments as under Article 28/41 of PCT (where the amendments are filed during the national phase rather than during the international phase), if necessary. If the above-mentioned amendments are rejected, unfortunately, we can file these amendments as ¡§voluntary amendments¡¨ when a Request for Substantive Examination is made or within three (3) months, from the date of receiving a Notice on Entering into Substantive Examination by the Chinese Patent Office.

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Mainland China Divisional Patent Practices

  Under the amended PRC Patent Law effective from July 1, 2006 to restrict ¡§continuous¡¨ divisional applications, once the parent patent application was granted and the period to file the desired divisional application(s) has expired, there is no way to file any further divisional application. That is, any divisional application should be filed by the date on which the two and a half months from the receipt of the allowance notice for the ¡§parent¡¨ patent application expire.

  It is necessary to submit the desired Claim sets upon filing the divisional application.

  If the applicant needs time to prepare the new claim sets, for securing the maximum time for developing the desired claims, the applicant could make use of the following strategy, i.e. we can submit neither response nor the withdrawal petition by the final response deadline for the parent application and then wait to receive the Official Notice of Being Deemed to Have been Withdrawn around two months therefor. After receiving such Notification, we have two months to revive the parent application by submitting a nominally justified reason with the official fees. After the parent application is revived (which is about half a year later), we can then file any divisional application(s) including therein a duly developed claim set(s).

  It is necessary for the divisional application to submit the correct new Claims upon filing. It is impossible to file any new Claims for the divisional application after the divisional application is filed. Moreover, it is unacceptable for a divisional application with the same claims as the parent application upon filing, pending later submission of new Claims in response to an Office Action.

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