Patent

Main Points of the Proposed Amendment to Taiwan Patent Act

In order to respond to the impact of global tendencies, and to motivate the development of the key industries such as biological technologies, green energy and precision agriculture, the Taiwan Intellectual Property Office (TIPO) studied various topics before drafting the amendments to the Patent Act and held 15 public hearings in succession since 2006. After the integration thereof, TIPO formulated the Proposed Amendment to the Patent Act (“Patent Draft” hereinafter), and submitted it to the Ministry of Economy for review and approval on August 3, 2009. The Patent Draft is pending review and approved by the Ministry; it will be submitted to the Legislative Yuan (Congress) for legislation purpose upon its approval. The key points, among others, for the amendments are summarized as follows:

1. Supplementing the definition of exploitation of invention, utility model and design
   Exploitation is the general concept of “use” and includes such acts as manufacturing, offering for sale, selling, using or importing for the aforementioned purposes. However, the effective Patent Act randomly adopts the terms “utilization” and “exploitation” to refer to “use” or “practice” a patented invention, hence giving rise to inconsistent interpretation. Therefore, the definition of “exploitation” is introduced to the Patent Draft. All inconsistent use of the terms “exploitation” and “use” in the effective Patent Act is also revised in view of such introduction. (Articles 22, 58, 89, 124 and 138 of the Patent Draft)
   
2. Extending grace period to cover inventions derived under the concept of inventive step, and adding bases for claiming such
   The subject in capacity qualifying for claiming the grace period is unclear in the effective Patent Act. The Patent Draft thus specifies that the subject in capacity qualifying for claiming the grace period shall be the applicants, including the current applicants and the predecessors. Also, by reference to provisions of the European Patent Convention (EPC) and the Japan Patent Act, grace period is extended to cover inventions derived under the concept of inventive step. That is, the Patent Draft proposes to amend the grace period to be applicable to inventions that fall within the concept of novelty as well as that of inventive step. (Articles 22 and 124 of the Patent Draft)
   
3. Extending patent protection to animal and plant inventions
   The provisions of patent laws vary from country to country regarding whether animal- and plant-related inventions shall be patentable. To motivate the development of the domestic biotechnological industries, by reference to the legislations of the U.S., Japan, South Korea and Australia, animals and plants shall all be patentable subject matter for inventions, so that the restriction imposed by Article 24(1) of the effective Patent Act is deleted in the Patent Draft.
   
4. Introducing supporting provisions regarding specification, claim and drawings presented in foreign language to obtain a filing date
   Taiwan has always been very relaxed on how a foreign applicant may obtain a filing date based on a specification in a foreign language. In the effective Patent Act, no restriction is even imposed on the permissible foreign language for the purpose of securing a filing date. The Taiwan Patent Office intends to tighten these restrictions so that the Patent Draft newly specifies that while the filing date of an application is obtained on the basis of a specification in a foreign language, no amendments to the foreign version shall be permitted. That is, any amendments to be effected after filing shall solely be based on the Chinese specification translated on the basis of the foreign version as submitted to obtain the filing date; supporting provisions regarding corrections of translation errors are introduced given the newly introduced, strict limitation. The Patent Draft further authorizes the patent authority to promulgate provisions applicable to applications for which filing dates are obtained on the basis of specifications in foreign languages, and the types of permissible foreign languages for such applications. (Articles 25, 43, 44, 69, 108, 112, 127, 135, 141 and 147 of the Patent Draft)
   
5. Amendments to the time limit for submitting priority documents
   To allow ample time for applicants to obtain priority documents from the competent foreign authorities, by reference to the provisions of the Japan Patent Act and the Implementation Regulations of the European Patent Convention, the Patent Draft relaxes the time limit and proposes a new time period for submitting the priority documents, which shall be submitted within sixteen (16) months from the earliest priority date in the Patent Draft, versus the current time limit of within four (4) months from the filing date. (Article 29 of the Patent Draft)
   
6. Introducing provisions regarding restoration of rights
   In the effective Patent Act, restoration of rights can only be granted if the delay beyond any statutory deadline is caused by natural calamities or other causes not attributable to the applicants; and no rights can be restored due to the applicants’ unintended oversight. To provide applicants with additional insurance, the Patent Draft introduces that, while an applicant or patentee unintentionally fails to make a claim for priority at the time of filing, or fails to effect annuity payments resulting in loss of rights, the applicant or patentee shall be qualified to petition for restoration. For the later petition, the effect of the restored rights shall not be extended to those that have been implemented in good faith or have completed the necessary preparation after the patent is deemed to have extinguished and before the announcement of granting the petition for restoration of rights. (Articles 29, 52, 59 and 72 of the Patent Draft)
   
7. Relaxing the duration for which an divisional application may be filed
   Under the effective Patent Act, no divisional applications are permitted upon service of a Notice of Allowance or a Final Decision to the applicants. Due to the difficulty for the applicants to predict when a Notice of Allowance is to be issued and thus losing the rights to effect divisional applications, in the situation where the first Office Action is a Notice of Allowance, the Patent Draft proposes to relax the duration for which an divisional application may be filed to be within thirty (30) days from the date of serving the Notice of Allowance. (Article 34 of the Patent Draft) The current restriction, however, still applies to situations where the first Office Action is one other than a Notice of Allowance.
   
8. Relaxing the statutory timing for effecting voluntary amendments and introducing Final Notice System
   Under the effective Patent Act, voluntary amendments can only be effected at the time of requesting for examination, within three months from the date of being notified that a request for examination has been initiated by a third party, and at the time of responding to office actions. The Patent Draft proposes to remove such restrictions and shall permit applicants to effect voluntary amendments at any time. Nevertheless, to avoid delay of examination due to such relaxation, by reference to the “Final Notice” System in the Japan Patent Act, the Patent Draft further provides that, upon issuance of a “Final Notice” by the patent authority, only amendments responding to issues raised by the patent authorities or other specific basis specified under the Patent Draft, in order to advance the patent application to the state of allowance, shall be entered. (Article 43 of the Patent Draft)
   
9. Amendments to provisions regarding patent term extension for invention patents covering pharmaceuticals, or agrichemicals or processes for preparing such
   The provisions concerning patent term extension for invention patents covering pharmaceuticals or agrichemicals in the effective Patent Act are relaxed. Specifically, the provision imposing the limitation that a patentee may apply for patent term extension only if the time to acquire other permits before practicing such patents exceeds two years from the publication date of the patent, is proposed to be deleted. The Patent Draft, however, adds the provision that the scope of patent term extension as granted shall only be extended to the effective ingredients and use as specified in the permits. (Articles 53, 54 and 56 of the Patent Draft)
   
10. Adding acts to which an invention patent shall not extend
    The Patent Draft introduces additional acts to which an invention patent shall not extend, namely, non-public acts not out of commercial purposes; those that have been implemented in good faith or have completed the necessary preparation after the patent is deemed to have extinguished and before the announcement of granting the petition for restoration of rights; research, experiments and other acts that are necessary for the purpose of acquiring the medicine examination and registration permit as stipulated in other laws; or for the purpose of acquiring permits to market pharmaceuticals overseas. (Articles 59 and 60 of the Patent Draft)
    
11. Amendments to provisions concerning invalidation proceedings
    Under the Patent Draft, the patent authority may issue a decision partially invalidating a patent right and is bestowed the power to investigate further evidence, and the discretion to consolidate more than one proceeding against a single patent right. Since partial invalidation becomes possible under the Patent Draft, it is proposed that provisions mandating the patent authority to instruct the applicant amending or deleting non-patentable claims prior to issuing a decision are to be deleted from the effective Patent Act. (Articles 73, 75, 77 and 80-84 of the Patent Draft)
    
12. Introducing compulsory licensing provisions concerning public health issue
    Cooperating with the WTO’s efforts to help developing countries and under-developed countries to obtain the patented drugs for solving their domestic public health crisis, according to the Patent Draft, compulsory licenses may be applied for in the case of a national emergency or extraordinary state of affairs occurs or the public interest so requires. The pre-requirements for granting such licenses and the scope of such licenses as granted are also specified in the Patent Draft. (Articles 92 and 93 of the Patent Draft)
    
13. Amending the related provisions concerning patent infringement
    The subjective requirements of patent infringement are specified. To claim “elimination of infringement” or “prevention of future infringement,” intent or negligent of the infringer may not be required; on the other hand, to claim compensation for damages, the infringer subjectively must have intent or negligence. Further, under the Patent Draft, damages may also be calculated on the basis of the royalty for licensing the patent under infringement. The wording regarding patent marking is also revised to prevent misleading interpretation that marking is a prerequisite for enforcing a patent right. (Articles 98 to 100 of the Patent Draft)
    
14. Introducing new patentable subject matter for design patents
    Under the effective Patent Act, design patent protection is only extended to a concrete object that can be individually put into commercial transaction by ordinary consumers. The Patent Draft opens the door to other subject matter so that design patent protection will be extended to partial designs, computer icons, graphic user interface and articles in sets. The associated design system, which covers designs originated from and similar to a design of the same person will be abolished and replaced with the derivative design system. The major difference between these two systems is that, the effect of an associated design shall not be extended to the scope of similarity, whereas that of a derivative design shall. (Articles 123, 129 and 131 of the Patent Draft)