Taiwan Patent Act Amendment Passes Legislative Readings
published on 10 Jan 2012
The Legislative Yuan, which is similar to the US Congress, on November 29, 2011, passed an amendment to the Taiwan Patent Act after three readings.
The amended Patent Act is considered an overhaul of the current Act, of which a total of 108 out of 159 provisions were revised, added or deleted. It is expected that the new Act will be promulgated and fully implemented in December of 2012 after the corresponding measures and implementing rules are in place.
The following is a list of the major changes made to the Act:
1. Granting a 6-month grace period to applicants who disclose their own inventions in printed publications. The grace period is applicable regardless of whether a publication is for a commercial or academic purpose, and regardless of whether the disclosure resulted from experiments performed with respect to a particular invention.
The 6-month grace period not only reserves the novelty right for inventions that are disclosed within 6 months before filing, but also reserves the right to inventive step that the disclosed invention may possess. Therefore the disclosed invention after filing can be exempt from being cited by a later art for lacking inventive step under specified conditions.
2. Allowing reinstatement of rights for unintentionally failing to claim priority rights at filing, or failing to pay issue fees or patent annuities. The missing priority claims can be reinstated within 16 months commencing from the earliest priority date; whereas patent rights lost due to failure to pay issue fees or patent annuities may be reinstated upon payment of the issues fees or patent annuities within 6 months after the due date.
3. Abolishing the time limit for voluntary amendments. If an office action is issued with a designated deadline to respond, the applicant can only make amendments before the specified lime limit.
However, if the applicant receives a Final Office Action, he/she can only make amendments in a limited number of ways, namely by (a) deleting the claims, (b) narrowing the scope of claims, (c) correcting errors and (d) clarifying unclear descriptions.
4. Relaxing the timing to file divisional applications up to 30 days from the receipt of the Notice of Allowance for an application undergoing the first-stage examination. Therefore, even though a patent application after the first-stage examination is allowed, the applicant can still opt to file a divisional application within the 30-day time limit.
It is worth noting that such a 30-day grace period after issuance of a Notice of Allowance would not be available for an application undergoing re-examination (re-examination of a patent application is requested after the patent application has been rejected by the examiner in the first-stage examination). Regardless of the outcome of the re-examination proceeding, no further divisional application can be filed once a decision is made.
5. Adopting international patent exhaustion, while enlarging the scope of patent exemption to embrace private use for non-commercial purposes, pre-clinical and clinical trials for patented or generic drugs for obtaining drug regulatory approval.
6. Removing the 2-year threshold requirement for applying for patent term extensions for pharmaceutical and agrochemical related inventions that receive a Notice of Allowance. The extended patent term, however, cannot go beyond the designated scope of effective composition and the purpose of use indicated in the approval license.
7. Adding “negotiation with reasonable commercial condition within a considerable period of time” as a pre-requisite for applying compulsory licenses for patents that are of public interest, and for exploiting utility patents that involve technical advances of economic significance.
8. Stipulating compulsory licenses and exports of pharmaceuticals under DOHA Declaration for the issue of public health.
9. Permitting partial invalidations, consolidation of pending invalidation and amendment proceedings.
10. Requiring subjective intent for damage awards. At the same time, abolishing punitive treble damages and compensation for the loss of business reputation.
11. Stipulating reasonable royalties as one of the
methods for computing damage awards if the patent is licensed to practice by others.
12. Abolishing patent marking as a pre-requisite for damage awards. Patent right holders can choose not to mark on patented articles if marking is undesirable in practice. However, the patent right holder bears the burden to prove that an infringer has, or should have had, knowledge of the existence of the patent infringed upon.
13. Allowing invention and utility model applications to be filed at the same time for the same innovation, while providing options to choose one upon the grant of the invention patent. However, the first-registered utility model patent shall be deemed never to have existed upon opting the invention patent.
14. Admitting partial designs, derivative designs, design of articles in a set, icons and graphical user interfaces (GUIs) as patentable subject matter.
For any questions relating to this topic, please contact us at cjchen@tsailee.com.tw |