On November 29, 2011, the Legislative Yuan passed the draft amendment to the Patent Act proposed by the Executive Yuan. The Patent Act has been amended comprehensively, covering a total of 159 articles (108 amended, 36 added and 15 deleted). The date on which this Act takes effect will be decided by the Executive Yuan. It is estimated this Act will come into force one year after its promulgation by President.
It has been over eight years since the Patent Act was last amended in February 2003. To promote innovation and development of domestic industries, strengthen the patent examination system, and bring our domestic patent system more in line with international practices, the Executive Yuan submitted the draft amendment of the Patent Act to the Legislative Yuan on December 11, 2009 for review. After four examination meetings convened by the Economics Committee of the Legislative Yuan and two political caucus negotiations, the amendment was passed.
The main points of the amendment are as follows:
1. The applicant for the patent may claim grace period for disclosing his/her invention in any kind of printed publication by himself/herself within 6 months before the filing date. The printed publications are not limited to academic publications.
2. Introducing the“reinstatement of rights” mechanism, whereby applicants or patent owners who lost their patent rights because they unintentionally failed to claim priority rights at the time of application or failed to pay patent annuities on time may apply for reinstatement of rights.
3. Providing the claim(s) and abstract are independent from the description.
4. Deleting the time limit for applicants wishing to amend applications; however, after TIPO has issued an office action, the applicants can only amend their applications within the time limit specified in the said action. Furthermore, after TIPO has issued an office action, as it deems necessary, it may issue a final office action. A patent applicant can only amend claims in any of the following manners within the time limit specified in the said final office action: (a) to delete claim(s); (b) to narrow the scope of claim(s); (c) to correct erroneous description; (d) to clarify unclear description.
5. Allowing divisional applications to be filed within 30 days from the date on which an approval decision for the original patent application was issued.
6. Amending conditions that were excluded from the scope of patent right, including private acts that are for non-commercial purposes, acts that are necessary for obtaining drug regulatory approval in Taiwan and abroad, and adoption of the international exhaustion principle.
7. Removing the minimum two-year threshold requirement for applying for extension of patent terms of pharmaceutical and agrichemical related invention patents; clarifying that patentee may apply for only one extension of the patent term of the said invention patent based on the first regulatory approval, and the said regulatory approval can be used for seeking patent extension only once.
8. Amending the requirements for applying compulsory licenses, the condition “failure to reach a licensing agreement with the patentee concerned under reasonable commercial terms and conditions within a considerable period of time” becomes a prerequisite to apply for compulsory license for public non-commercial use or exploiting dependent patent involving an important technical advance of considerable economic significance; Providing TIPO shall determine the amount of compensation together with granting compulsory licenses.
9. Compulsory license may be granted to produce pharmaceutical products for export to developing or least-developed countries to solve their public health crisis.
10. Revising the patent invalidation system, including abolishing examination by ex officio action, allowing invalidation actions to be filed against part of claims, combining procedure for invalidation actions and corrections, as well as combining decisions for invalidation actions and corrections.
11. Clarifying the infringer’s intentional or negligent act as necessary for the patentee to claim the damages of patent infringement; revising the methods of calculating damages; and clarifying where no patent marking is made, evidence shall be produced when claiming damages to prove that the infringer has had knowledge or may have knowledge with respect to the fact that the said article is under patent protection.
12. Adding provisions that allow the same applicant to file an invention patent application and a utility model patent application for the same creation on the same date. After TIPO determines the invention patent is allowable, it will notify the applicant to select one patent within a specified time limit. Where the applicant selects the invention patent, the utility model patent shall be deemed non-existent ab initio.
13. Allowing partial designs, computer-generated icons and graphical user interfaces （icons & GUIs）, and sets of articles into the scope of design patent protection; introducing the derivative designs system.
The original amendment to the Patent Act proposed by the Executive Yuan was to provide overall patent protection to animals and plants. However, since consensus could not be reached at the current stage, the Council of Agriculture recommended postponement to expand the plant patent after taking into account the current development of domestic industry, the impact plant patent may cause and that plant innovation currently may be protected by plant variety right. Patent protection for animals and plants would be best implemented if consensus could be reached with regard to technology development and demand of industry. Therefore, expanding patent protection for animals and plants is not included in this amendment.
The amendment to the Patent Act covers many changes to Taiwan’s patent system. The date on which this Act takes effect shall be decided by the Executive Yuan to allow all sectors to gain a thorough understanding of the new system and to adapt to its operation. TIPO has begun to prepare corresponding measures, which include amendments to relevant patent regulations, examination guidelines, patent related application forms, and computer systems.
Source Intellectual Property Office
