TIPS^®  Taiwan Intellectual Property Special

Summary of the Newly Amended Patent Law

The Patent Law Amendment was passed by the Legislative Yuan (the Taiwan Congress) on January 3, 2003. Due to its overhauling content in the Taiwan patent system, the new law will not effective until the middle of next year (2004). The major points of the Patent Law Amendment are summarized as follows:

1. Providing the legal basis for e-filing.

2. Relaxing legal requirements concerning the application procedures, to make the application simpler to the public.

3. Postponing the deadline for requesting a re-examination from 30 days after receiving an Official Rejection to 60 days after receiving an Official Rejection.

4. Integrating the pre-grant opposition into the post-grant invalidation, i.e., granting the patent right earlier. As the opposition is deleted, the applicant may pay the issuing fee within 3 months upon receiving the Notice of Allowance.

5. Allowing the Taiwan Intellectual Property Office (TIPO) to give priority to examination of cases involving infringement litigation, in order to accelerate the invalidation process in connection with patent infringement.

6. Allowing natural persons, schools, and small and medium size business entities to apply for patent annuity exemption, to encourage them engaging in the innovative activities.

7. Adopting registration system for utility model patents; substantive examination for utility model patents is no longer required.

8. Completely remove criminal penalties from the Patent Law; patent infringements will be pursued under civil procedures only.

This amendment is a significant change of the patent law, including abolishing the pre-grant opposition procedure, adopting the registration system for utility model patent applications, and decriminalization of the patent infringement. Relevant procedures and public education measures should be implemented to carry out the new provisions. Therefore, the effective date of the amendment will be separately announced by the Executive Yuan (the Taiwan Cabinet), which becomes effective upon the promulgation. The TIPO estimated that the new law will take effect a year from promulgation, probably in July 2004. With respect to new utility model and design patents, in accordance with Article 135, the examination process will be based on the new law then.