TIPS^®  Taiwan Intellectual Property Special

Newly Effective Patent Laws

The Legislative Yuan passed the Amendment of Patent Law to comply with WTO requirement in 1997. The 1997 Amendment had not become effective until January 1, 2002, the date WTO agreement taking effect in Taiwan.

1. Deleting the nationality requirement for priority claim.

As long as the foreign applicant has a domicile or business office in a reciprocal country, the applicant is entitled to claim priority based on an application duly filed in the reciprocal country, in absence of the mutual recognition of priority rights between Taiwan and the applicant’s home country.

2. Providing legal ground for claiming royalties

Where a person’s patent right is revoked as a result of cancellation action filed by the patentee, the person is still entitled to continue domestic good faith use, shall pay royalties to the patentee.

3. For invention patents granted prior to January 21, 1994, if the exclusive rights do not expire at the time of Taiwan’s WTO accession, i.e., January 1, 2002, their exclusive rights shall be extended to 20 years from the application date.

4. Extending the term of Design Patents to 12 years.

5. Any design patent that remains effective at the time of Taiwan’s WTO accession, i.e., January 1, 2002, shall be extended its exclusive right to 12 years from the date of application.

6. National Treatments for foreign nationals whose home countries have the same reciprocal treatments for Taiwanese applicants.

˙Grant of invention patents to new microorganism species.

˙Extension of patent term for invention patents covering pharmaceuticals, agri-chemicals, or processes for preparing same.

˙Rights to preclude others from import patented articles.

7. Restrictions on Compulsory Licensing for Patented Semiconductor Technology.

Grants of compulsory licenses for patented semiconductor technology shall be limited to only non-profit use for advancing public welfare.

8. Conditions on Compulsory Licensing of Practicing Reinvention

˙Negotiating for cross licensing with the owner of the original patentee is required.

˙After negotiation failed, compulsory licensing is available; provided, compared with the original patented invention, the reinvention is an important technology improvement with valuable economic benefits.

9. Requiring marking of patent numbers on patented articles or the packaging thereof as a condition for damages claim.

In the event that the infringer has knowledge or there is evidence indicating the infringer should has known that the articles are patented, damages can still be claimed even without affixing the patent numbers.

10. In order to rebut the assumption of infringement to patented processes, it should be proven that the manufacturing process used to manufacture the article is different from the patented manufacturing process.

Furthermore, the Administrative Court also announced that a special administrative court for IP cases would be established on February 1, 2002.