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香港專利申請要點解析

隨著企業業務的不斷發展和擴充,現今台灣和國內不少企業想要將自己的業務擴展到香港市場上。那麼想要進軍香港市場的話肯定是需要申請註冊香港專利的,很多對香港專利註冊不清楚的申請人就容易走彎路,那麼接下來我們就來看看香港專利申請的一些要點。

 

香港專利有標準專利(相當於大陸的發明專利)、短期專利(相當於大陸的實用新型專利)和外觀專利這三種,下面我們就分別來看看:

 

香港外觀專利

需要提供的資訊有申請的外觀設計名稱、發明人的姓名、地址、國籍以及申請人姓名或名稱、地址、國籍等,也需要提交一份委託申請書,且必須是由申請人簽字的原件。其他需要提供的材料還有產品的外觀設計照片,同時建議大家申請色彩保護的專利,也需要提交彩色和黑白圖片。之後就是簽署委託代理合同和申請權屬聲明了,香港外觀專利保護的期限為5年,最多可以續展4次且每次也是5年。

 

香港短期專利

短期專利只進行形式審查而不作檢索和實質性的審查,這種申請需要提交奧地利、澳大利亞、中國等國家中其一的專利局的申請報告。短期專利申請需要的材料有產品的說明書、權利要求樹以及摘要等,以及制定國家專利局出具的檢索報告,有優先權的也要申請提交優先證明文件。短期專利申請不會依賴于中國的發明或者是申請,因此一項發明或者是創作只要是在香港得到了專利保護,不需要再向中國專利局提出同樣的申請了。

 

香港標準專利

需要的資料有指定專利局的公開文本,包括PCT申請公開文本,以及中英文摘要和發明的中英文名稱。申請人應該向指定專利局提出申請,在該專利被專利局公佈的6個月內像香港知識產權局申請備案。註冊處經過審查之後授予註冊以及公佈,標準專利的保護期限一般是二十年。

 

資料來源: CtR智群知識產權事務所

 

Who To Hire: A Local Or A National Attorney When Filing For A U.S. Patent Application?

While the United States Patent and Trademark Office (USPTO) doesn’t actually recommend hiring a patent lawyer when filing for a patent application, experienced inventors highly recommend it for newbie inventors. The reason: The patent application and maintenance process including settlements and litigations can be complicated so much so that a non-lawyer can find it overwhelming. Even a single mistake can mean financial loss for the inventor, such as when other steal and profit from his inventions.

 

The next question: Who should you hire – a local lawyer or a national lawyer?

 

Advantages of a Local Lawyer

 

If you’re more comfortable working with a local lawyer, then hiring one makes sense. You may have established a good professional relationship with him, researched his background and track record, and relied on a mutual friend’s recommendation, among others. You may just like the convenience of meeting with your lawyer at a moment’s notice, so to speak, to present your prototype or process.

 

During these meetings, you can actually demonstrate your invention and show its novelty, utility and non-obviousness. You appreciate the proximity of your lawyer’s office in setting up appointments.

 

Advantages of a National Lawyer

 

But you may want to look farther than your neighborhood for many reasons. First and foremost, the patent law of the United States has a national (i.e., federal) scope so it’s neither governed nor regulated at the state and county levels. By its nature, patents are valid in the entire country although their validity will only be recognized in the United States, not beyond its borders, as a general rule.

 

The bottom line: The patent protection you’re seeking will have a national scope and, as such, hiring a local attorney particularly a member of the state bar isn’t as relevant as you may think it is.

 

There’s also the fact that patent attorneys should be registered with the USPTO for them to be recognized as authorized counsels of the inventors they represent. Furthermore, they are authorized to represent their clients in any place in the world.

 

This means that where the USPTO is concerned, you and your lawyer don’t even have to meet in person at any time during the patent application process. With technologies like emails, video calls, and messaging, you and your attorney can discuss issues, provide updates, and make decisions without meeting face-to-face.

 

In fact, foreign nationals can file U.S. patent applications through their U.S. attorneys without the need for face-to-face meetings! Every information can be transmitted and received through electronic means, not to mention that patent applications can be made online.

 

Your attorney’s location isn’t an issue with patent applications. The pertinent documents including the description, drawings and diagrams can be emailed in the required format. The reply from the USPTO can also be done in the same manner.

 

Instead of worrying about the proximity of the attorney to your home or office, you should concentrate on the appropriate qualifications.

 

資料來源: CtR智群知識產權事務所

 

What To Expect During A Patent Infringement Lawsuit

Patent infringements are a common occurrence, especially in a world where new products are designed, manufactured, and sold worldwide and where copycats are a dime a dozen. Many of these infringements become lawsuits or litigations that affect both the complainant and the defendant. The effects can be surprising, too, such as when the complainant ends up shouldering huge litigation expenses that could have been avoided if an amicable settlement was made. Here take a look on the U.S. patent infringement lawsuit for ease of understanding.

 

The bottom line: Be careful about filing a patent infringement lawsuit because it can have unforeseen consequences. But if you have a great patent lawyer and you have just cause, then you may well benefit from filing it. Here are a few things that you may want to know.

 

Specific Venue

 

All patent infringement actions have to be filed in the United States District Courts, the general courts of the country’s federal court system. The venue makes sense because patents are considered national in scope and, thus, their litigations should be heard in a national (i.e., federal) court.

 

Since there’s at least one judicial district for every state, as well as in the District of Columbia, Puerto Rico, Guam, the Northern Mariana Islands, and the United States Virgin Islands, the issue of geographical location shouldn’t be a big deal. Currently, there are 94 judicial districts in 50 states and the territories.

 

Prescription Period

 

The patent infringement action should be filed within six years, maximum, after the date in which the infringement occurred in order to recover damages. Unlike other statutes of limitations, furthermore, the six-year period can be extended when the parties agree to it. For example, a tolling agreement can be in effect while the settlement negotiations are in progress.

 

But the six-year prescription period cannot be extended by reason of concealment or fraud. For example, if you discover that your invention was incorporated in a machinery 10 years after the fact, you’re unlikely to sue for damages if the infringer covered up the use. We have to say that the rules and regulations of patent infringements don’t automatically favor the patent owner or holder.

 

Judge’s Decision

 

While patent infringement lawsuits can be under a jury, the judge alone has the responsibility to interpret the claims for patent ownership made by the plaintiff and the counterclaims of the defendant. The judge and/or jury examines the patent and makes comparisons of the elements made in the lawsuit, said comparison being between the patent’s design and the infringer’s product or process.

 

From the comparisons made, the judge or jury then decides on the merit of the plaintiff’s claims actually and significantly cover the defendant’s product or process. In case of a read on, the legal term used to describe the plaintiff’s claim covering the product or process, then an infringement offense can be considered.

 

資料來源: CtR智群知識產權事務所

 

香港專利怎麼申請?


資料來源: CtR智群知識產權事務所
 
眾所周知香港是中國的一部分,但同時她又有自己的一套法律體系,這就導致香港的專利制度有別於中國。香港專利又分為標準專利和短期專利兩種,接下來我們就來詳細地瞭解一下:

 

香港標準專利的有效期最長可以達二十年,想要得到標準專利的保障,就需要專利申請人在中國、英國或者歐洲專利局所發表的專利申請日期的六個月內,向香港專利註冊處提出申請即可。

 

申請標準專利的批准是需要以中華人民共和國國家知識產權局、歐洲專利局和聯合國專利局,這三個專利局批予的專利註冊為基礎的。申請香港標準專利一般要經過兩個階段,一是提交指定專利申請的記錄請求,也就是在以上三個專利局發表的專利申請;二是已經獲得三個專利局的批准之後,就需要在香港提交註冊與批予請求。

 

香港短期專利主要就是為商業壽命短促的發明提供的保障,短期專利的有效期最長可以達8年,並且其申請是必須要通過形式上的審查,這樣才能獲得批予專利。

 

申請香港短期專利需要以其中一個國際查檢主管當局,或者是其中一個指定專利當局所製備的查檢報告為基礎。比如擬在中國香港申請的短期專利,就需要提交批予申請,並且也要提交所需的檔和資料來做支援。

 

香港專利申請需要提交的檔:

  • 記錄請求、已發表的指定專利申請副本、發明的中/英文名稱、申請人的姓名/地址、在中國香港提供送達文件的地址以及有關的資料和檔和譯本等等。
  • 香港專利申請可以選擇專業的專利申請機構,因為畢竟申請專利是很專業的,找專業的機構進行申請會更加順暢。

 

資料來源: CtR智群知識產權事務所

 

A More Comprehensive Look At The Definition Patent Infringement

In the United States, patents grant their owners the exclusive manufacture, use and sale, among other ownership rights, of the inventions. These are considered as grants of limited monopoly granted to inventors by the federal government, specifically by the U.S. Patent and Trademark Office (USPTO). But in a world filled with copycats, patents aren’t always respected by the non-holders, an action that can result in patent infringement.

 

Prohibited Acts

 

Did you know that patent rights are older than freedom of speech and freedom of the press? Patent rights are actually included in the U.S. Constitution, which was adopted in 1787, under Article I, Section 8! Many of the basic American rights were only established in the Bill of Rights in 1791 or 14 years later.

 

Through the years, the implementing rules and regulations of patent rights changed in accordance with the times. In the 21st century, these are governed by 35 United States Code, a federal law.

 

Why are these things important for an inventor to know? If you read the code in its entirety – or at least, gain a basic understanding of its provisions – you will have a deeper understanding of patent infringement.

 

In a nutshell, patent infringement is the commission of a prohibited act regarding a patented invention without the current patent holder’s or owner’s permission. Keep in mind that patents are property and, thus, these can be bought and sold – the current patent owner must be aggrieved by the commission of the prohibited act. The act can take the forms of making, using, selling or offering to sell, and importing the invention or its equivalent.

 

Emphasis must also be made that no patent infringement action can be started without a valid patent issued. But inventors can secure pre-grant protection under 35 U.S.C. § 154(d) or file a provisional patent application (PPA).

 

Wilful and Unintentional Infringement

 

Wilful patent infringement refers to the deliberate commission of the prohibited act on the part of the offender. Unintentional patent infringement isn’t an excuse for committing it, an adjunct to the principle that ignorance of the law doesn’t excuse the offender.

 

The former typically involves the offender ignoring the fact that a patent for the product or process already exists and going ahead with its manufacture, use or sales. Many copycats are guilty of this type of patent infringement.

 

The latter can arise from the cliché that great minds think alike. In many cases, two inventors create essentially the same invention even when they work independently (i.e., the other has no knowledge about the other’s work). In these cases, the general rule is that the inventor who applies for a patent and who has sufficient proof that he was the first to make the invention will be awarded patent rights.

 

Do you have issues about patent infringement? You should consult a patent attorney for legal advice ASAP!

 

It is also vital to submit your patent application ASAP. As the patent application is quite professional, we suggest hiring an experienced patent attorney for individuals and organizations.

 

資料來源: CtR智群知識產權事務所

 

Starting On The Right Foot With Your Design Patent Application

The United States Patent and Trademark Office (USPTO) has strict requirements regarding patent applications for good reasons. Patents, after all, grant their inventors and/or owners the exclusive right to make, use and sell the products and/or processes covered. The USPTO are then extremely careful in granting patents and, in the process, can reject applications based on the smallest detail.

 

The bottom line: You have to start on the right foot when preparing your design patent application. You should ideally hire an experienced patent lawyer for this purpose. You must, however, still be on top of things, so to speak, by learning the basics including the ones discussed below.

 

Submitting the Right Documents

 

The USPTO provides two options for filing design patents: first, via paper application; and second, through its website (online). If you’re filing via the first option, you have to send the application documents by Express Mail. If you’re using the second option, you must convert these documents including the application and drawings to PDF format; there are electronic forms available on the USPTO website.

 

In both cases, you have to submit certain documents including:

  • The specification, a short written document
  • The drawings showing the design’s appearance, usually from several angles
  • The Declaration, the designer’s oath
  • The Design Patent Application Transmittal, a cover sheet
  • The Fee Application Transmittal Form, and
  • The payment for the filing fee (e.g., cashier’s check)

 

Be sure to read and understand every line of these documents as a precautionary measure. You don’t want your patent application returned or rejected due to a clerical error, among other possible mistakes. You also want to increase the chances of your request patent being granted, not to mention that the USPTO generally doesn’t give refunds even for rejected applications.

 

Getting the Entries Right

 

Due to the complexity of the documents, especially the drawings, you should seriously consider hiring experts including a patent lawyer and a graphic designer. You will still retain ownership over the patent once it’s granted obviously.

 

For the specifications document, here are a few things to get you started:

  • Write a couple of boilerplate sentences announcing your intention for a design patent in the preamble.
  • Make the specification, the section where you make an introduction of your design by name, as simple as possible.
  • Indicate previous patent applications related to your current application in the Cross References to Related Applications.

 

You can be descriptive with your invention description in the Feature Description field but avoid using flowery words, exaggerations and the like.

 

For the drawings, keep in mind that the USPTO prefers technical and stylized drawings of inventions. Every element, from stippling and linear shading to using colors and patterns, has a specific meaning so be careful about submitting haphazard drawings. While you can initially submit informal drawings, you will still be required to provide formal drawings by the USPTO examiner before your application can be acted on.

 

As the patent application is quite professional, we suggest hiring an experienced patent attorney for individuals and organizations.

 

資料來源: CtR智群知識產權事務所

 

Extreme Caution: A Must When Dealing With Solicitations After U.S. Trademark Application

After filing an initial application for trademark registration, it can be problematic, too. The problem can start with a response to one or more of the solicitations from private companies, a problem that can be prevented if and when you exercise extreme caution when dealing with these offers.

 

Here are the things that you should be aware of about trademark-related solicitations.

 

Cold Calling Is the Norm

 

Solicitation come in two forms: first, an offer of service for trademark initial application; and second, a notice of an approaching trademark filing deadline accompanied by an offer of service. In both cases, there’s usually a fee for the performance of these services.

 

Your next question is: Why did you get these solicitations from private companies? Keep in mind that when you file a mark application with the United States Patent and Trademark Office (USPTO), the information on the application form will become part of the public database. As such, the general public can access your information including your full name and street address.

 

The private companies sending these solicitations use the USPTO database to identify the individuals and organizations that have filed applications and have upcoming filing deadlines. But always remember that you are never required by the USPTO and other regulatory agencies to use their services in any manner and form.

 

Beware of the Legitimacy of the Services

 

Let’s say that you consider the solicitation because it appears legitimate. But don’t plunge with both feet, however, as not all of the services offered are legal and legitimate. You have to exercise extreme caution in considering the types of services offered, especially if these seem too good to be true.

 

For example, offers for assistance in making an appropriate response to an office action (i.e., a letter from the USPTO detailing the substantive reasons for its refusal to register your mark). But if it’s an offer to record your trademarks in a non-public registry, you should ignore the solicitation – a private registry of trademarks isn’t recognized under present trademark laws in the United States.

 

Fortunately, you can easily tell the difference between official USPTO notices and potentially misleading offers. For one thing, the official correspondence regarding your initial application or maintenance of registration will be addressed as from the United States Patent and Trademark Office from its national headquarters in Alexandria, Virginia. All e-mails will have “@uspto.gov” as the domain name; if it isn’t, your alarm bells should be ringing.

 

For another thing, the notice from dubious private companies offering trademark registration services can have threatening words to emphasize the urgency of an upcoming deadline. Don’t believe the deadlines stated on these notices – instead, use the Trademark Status and Document Retrieval feature on the USPTO database to check the deadlines.

 

Ultimately, you have the responsibility to protect yourself against scams, especially as the USPTO doesn’t have the legal authority to prevent private entities from sending unsolicited offers and notices.

 

As the trademark application is quite professional, we suggest hiring an experienced trademark attorney for individuals and organizations.

 

資料來源: CtR智群知識產權事務所

 

美國專利怎麼申請?

專利說白了就是一張紙,而這張紙是政府授權給發明人的一個壟斷權利。申請專利的條件必須是發明人本人申請,不是本人發明的就無法進行專利申請。現在國家和社會都比較注重視專利保護了,也有不少人會選擇申請美國專利,那麼下面我們就來看看美國專利是怎麼申請的。

 

一般來說,美國專利有三種不同的類型:發明專利、外觀專利和植物發明專利,而沒有中國的實用新型專利。而美國的商標局包辦專利和商標註冊工作。

 

那麼,什麼是植物發明專利? 它是政府對無性繁殖的顯著且新穎的植物品種給予的專利保護權利,但塊莖繁殖植物或者發現於未經栽培環境下(如野外)的植物不在此列。植物發明專利自申請日起計二十年,分別自註冊日起第三年半、七年半及十一年半繳納維持費。

 

美國發明專利自申請日起計二十年,分別自註冊日起第三年半、七年半及十一年半繳納維持費,保護範圍涉及組合物或者使用該組合物的方法的專利,其有效期可以延長,最多可以延長五年。

 

美國外觀設計專利則自註冊日起計十四年,公開後於半年內仍可提出專利申請。

 

向美國申請專利有三種途徑,一是直接向美國申請專利,二是通過巴黎公約向美國申請專利;三則是通過PCT專利合作條約向美國申請專利。

 

在申請專利的時候首先就是要提交一份國際專利申請,那麼就可以向多個國家申請專利了,申請美國專利的同時也可以申請其他國家的專利,並且不需要向每個國家提交申請,一份申請就可以搞定了。

 

然後就是美國專利申請提出普通專利申請的時候,申請人必須要在首次提交專利申請日後的12個月內,辦理國際專利申請以進入美國專利申請的手續。若是要求了國際初步審查的話,還可以在首次提交申請日後的30個月內,來辦理國際申請專利以進入美國的專利申請。

 

美國專利申請是要經過國際檢索單位的國際檢索的,之後可以得到一份高品質的國際檢索報告,該報告給出一篇或者是多篇,就可以讓專利申請人瞭解現有的技術狀況,那麼也可以對自己的發明是否具備授予專利的前景也能有個初步判斷。之後只需要向美國專利受理局繳納申請費用就可以,在申請美國專利的同時也可以申請其他國家,總之就是一起申請會更加方便。

 

資料來源: CtR智群知識產權事務所

 

Should You Abandon Your Trademark Application?

The short answer: It depends on whether the abandonment will work for you or against you. Since even your decision to abandon your trademark application has its legal and practical implications, you should seriously considering hiring an experienced trademark attorney.

 

With or without an attorney, here are a few things that you must consider when deciding whether to abandon or not your application.

 

Consider the Grounds for Rejection

The action letter, or the rejection letter issued by the USPTO after the examining attorney’s initial examination of you application has been completed, contains the valid grounds for rejection. These grounds can range from technical grounds (e.g., procedural mistake) to substantive grounds (e.g. likelihood of confusion), and each ground should be answered satisfactorily by the patent applicant for the application process to proceed.

 

From the careful consideration of the grounds stated in the action letter, you can make a decision of abandonment or continuance. You may, for example, abandon the application in case of a rejection based on descriptiveness – if your mark is descriptive according to the standards set by the USPTO, then getting it registered doesn’t give you extra protection in case of an infringement. You can’t sue everybody who uses the descriptive words used in your mark since these are generic by nature.

 

If the rejection was based on the likelihood of confusion, you have to consider whether the costs in time, energy and money will be worth the benefits in name recognition and recall. You must consider, too, the possibility of a trademark infringement lawsuit if you continue using the mark.

 

Let’s say that you decide to abandon your application. You should ideally make an express statement of abandonment by filing a Request for Express Abandonment (Withdrawal) of Application through the Trademark Electronic Application System (TEAS), an online system at the USPTO official website.

 

Beware the Consequences of Abandonment

Lest you think that abandonment of your trademark application is easy – look, Ma, no consequences – it isn’t. Keep in mind that there are several ways of abandoning your mark and with these ways come consequences that you should be prepared to deal with.

 

Let’s assume that for one reason or another, you stopped using the mark for a prolonged period or you failed to maintain quality control over its use. Under the trademark laws, you are considered as having abandoned the trademark and, thus, you will lose the exclusive right to its use.

 

What can you do if the USPTO sends an action letter expressing final rejection of your mark as non-registrable? You can appeal to the Trademark Trial and Appeal Board in case the reason for rejection was substantive; file a petition to the director if the reason for rejection was technical or procedural; request the examining attorney to make another examination; or amend the application and seek for registration on the Supplemental Register in case of a descriptive mark-based rejection.

 

And, of course, you can abandon the application and give up the exclusive right to your mark.

 

資料來源: CtR智群知識產權事務所

 

Responding To Rejections Of Trademark Applications

The U.S. Patent and Trademark Office (USPTO) can reject trademark applications on several grounds. The trademark applicant must know the best way to respond to the rejection – and it’s definitely not writing a scathing letter disparaging the USPTO examiner’s qualifications – to get a favorable outcome in the end. Here are things that you need to know about it.

 

Action Letters

The USPTO examiners write three types of action letters, the term used for trademark application rejections.

  • Technical rejections typically involve procedural oversights or minor matters that can easily be resolved by the appropriate amendments.
  • Substantive rejections usually involve more complicated matters, such as the likelihood of confusion, generic claim, and descriptive mark, which are more challenging to resolve. In most cases, the professional assistance of an experienced patent lawyer is recommended, if not a must, to get approval.
  • Final rejections are written and issued only after you have failed to respond to either of the two abovementioned rejections at least once.

 

If you receive either a technical or a substantive rejection in the mail or by telephone, you shouldn’t lose hope as the examining attorney will give you at least one chance to answer. You will find that these action letters are common so you’re not being singled out, discriminated against, or targeted for exclusion by the USPTO.

 

Prescription Period

The action letter always specifies the number of months that you should respond to the issues being raised as the reasons for rejection. In general, the USPTO gives applicants six months to make the appropriate response to an action letter.

 

If you don’t respond within the prescribed period, you run the risk of having your application considered as abandoned by the USPTO. In case of abandonment, you have to return to square one of the application process if you still want the trademark registration.

 

The bottom line: Always send your response to an action letter as soon as possible. But avoid rushing your response since you don’t want to run the risk of yet another rejection call or letter for a minor matter. You have to double check that, indeed, your response corresponds to the grounds for rejection.

 

Choices to Make

You can choose from these three choices when responding to the action letter:

  • Make a response on your own
  • Hire a trademark attorney to handle the response
  • Abandon your application

 

If you respond to the action letter yourself, you have to make sure that you can actually handle it well – and it’s usually the case for technical rejections. But if you can’t handle the complexity of the grounds for rejection, you shouldn’t try to do so unless you’re willing to risk final rejection. Your trademark lawyer’s services may seem expensive at first but when you consider the benefits, you will likely be willing to pay for these services in the future.

 

資料來源: CtR智群知識產權事務所

 

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