Final Countdown for Implementation of the New Patent Act
published on 23 Oct 2012
The Taiwan Intellectual Property Office (TIPO) has announced that the effective date of the Amendment to Taiwan Patent Act will fall on January 1, 2013. For better transition and in anticipation of the implementation of the new law, we summarize the important changes with respect to various topics as outlined below.
Six-month Grace Period
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Applicable to
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No longer applicable to
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Either an actual applicant or prior owner of the right.
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An invention disclosed in a publication by the applicant.(n1)
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An invention disclosed due to “research.”(n2)
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Both novelty and inventive step.(n3)
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(n1) Even when it is a commercial disclosure- not limited to an experimental disclosure.
(n2) “Research” refers to a study or improvement for the technical content of an unfinished invention. A grace period can by no means cover any unfinished invention.
(n3) Derivations from the disclosures can be exempted even they overcome the inventive step.
Non-patentable subject matter
Diagnostic, therapeutic and surgical methods for the treatment of humans or animals are all non-patentable.(n1)
(n1) The non-patentability issue is not limit to methods related only to “diseases,” and may also include methods related to cosmetic surgery.
Patentable subject matter for design patents
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Permitted
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Not permitted
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Partial designs (n1)
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Graphical User Interface (GUI) designs
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Icons
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Designs as a set
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Derivative designs (n2)
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Associated designs (n3)
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(n1) All pending design applications at the time the new Act taking effect is given a three-month period to covertto partial designs within the extent disclosed by the original disclosure at filing.
(n2) The scope of a derivative design encompasses identical and similar designs.
(n3) All pending associated designs at the time the new Act taking effect is given a three-month period to convert to derivative designs.
Filing documents
a) No Assignment of Application Rights is required.
b) Foreign languages are not unlimited when used as a foreign text to obtain a filing date.(n1)
(n1) Only ten languages may be used for this purpose as follows: Chinese, English, Japanese, Korean, French, German, Arabic, Portuguese, Russian and Spanish.
Deposit of biological material
a) Time frame to submit a certificate of deposit is 4 months from the filing date of the application, or 16 months from the priority date claimed.
b) Domestic deposit may be exempted if a deposit has been made in a foreign depository recognized by Taiwan.
Claim of Priority
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Permitted
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Not permitted
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Failure to identify application number of the first-filed application.(n1)
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Failure to identify priority dates and the receiving office.(n2)
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16-month grace period from the earliest priority date to submit priority documents.
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Restoration of rights within 16 months after the earliest priority date.(n3)
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(n1) Can be submitted later.
(n2) Priority will be deemed to have never been claimed.
(n3) For unintentional omission of priority claim at filing.
Dual application system
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Permitted/Mandatory
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Not permitted
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Filing both invention and utility model patent applications for the same creation on the same date by the same applicant.
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Election of one right is compulsory before a notice of allowance is issued to the invention patent.
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A continuation of right converted from the utility model patent to the elected invention patent.(n1)
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(n1) When an invention patent is elected, the utility model patent will be deemed to have never existed.
Division of Application
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Permitted
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Not Permitted
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Filing divisional claims within 30 days upon receipt of the notice of allowance for the first examination stage. (n1)
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Extending the divisional scope beyond original disclosure in the description, claims or drawings.
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Deriving divisional claims from another divisional application.
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Divisional claims directed to features that have been allowed.
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A 30-day additional time frame upon receipt of the notice of allowance for any application under the second examination stage.
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(n1) Apply to invention applications only.
Amendment during examination
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Permitted
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Not permitted
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| Voluntary amendments made at anytime prior to issuance of Office Action on the merits.(n1) |
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Amendments after the issuance of Office Action on the merits, as long as within specific time limit.
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Amendments that go beyond the scope of invention disclosed at filing.
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(n1) Applicable to all applications pending at the time the new Patent Act is implemented.
Issuance of Final Office Action
A Final Office Action system is introduced in the new Patent Act to expedite patent examination. A Final Office Action will require the applicant to make amendments under some limited scope only and within a specific time limit. A Final Office Action will not be issued for every application. The following situations will trigger a Final Office Action:
1. New issues as a result of a response or amendment to a non-final Office Action.
2. For parent and divisional applications, reasons as stated in an Office Action for the parent application are the same as those stated for the divisional application, and vice versa.
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Permitted
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Not permitted
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Amendments after the issuance of Final Office Action, as long as within specific time limit.
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Limited amendments after the issuance of Final Office Action.(n1)
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Amendments other than the specific items, which may also trigger the immediate issuance of a Decision of Rejection.
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(n1) Limited amendments include deleting and narrowing claims, correction of errors, and explanation of indefiniteness.
Correction of Translation Errors
When an application is filed in a foreign language, examination of the application will still be based on its translated Chinese specification.
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Permitted
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Not permitted
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Correction of translation errors by referring to the foreign texts submitted at filing.
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Amending texts in foreign language submitted at filing.
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Extending the scope of the Chinese translation beyond that of the disclosure of the original foreign texts submitted at filing.
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Correction of the Chinese translation so that the scope thereof goes beyond that of the disclosure of original foreign texts submitted at filing.
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Restoration of Rights
Failure to make payments for patent grant or annuities will result in the extinguishment of patent rights. Under the new law, restoration of rights is possible when there has been an unintentional failure to make such payments.
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Permitted
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Not permitted
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Restoration of rights within 6 months after the due date for patent grant.
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Restoration of rights within one year after the due date for patent annuities.
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Enforcing rights against any bona fide third party exploiting the invention within the original scope if such third party believes the right has extinguished due to failure of payments.
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Amendments after grant
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Permitted
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Not permitted
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Deletion of claims
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Amendments that go beyond the original disclosure.
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Corrections of errors or translation
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Amendments that broaden the scope of protection as published.
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Explanations of indefiniteness
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Amendments that alter the scope of protection as published.
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Invalidation Proceedings
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Permitted/Possible
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Not permitted
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Invalidation Decision on partial claims- no need to revoke the entire patent right due to a few invalid claims.
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Reduce the claims to be invalidated after initiating the action.
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Altering or adding claims to be invalidated after initiating the action.
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Withdrawal of the invalidation by petitioner upon consent of the patentee who has responded to the invalidation action.
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Consolidation of multiple invalidation actions at examiners’ discretion.
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Limitations of patent rights
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Permitted
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Not permitted
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Non-commercial private disclosure
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Patent exploitation for research or experiments.
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Exploitation for the sole purpose of non-profit teaching.
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Continued exploitation of an invention in this country within the original business purpose by prior user.
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Prior knowledge of the invention from the patent applicant within 6 months before the application date.
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Parallel import of patented articles made by or made under the consent of the patentee.
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Continued invention exploitation by a bona fide third party before restoration of the patent right within the original business purpose.
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Research and trials of pharmaceuticals for the purpose of regulatory approval.
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Preparation of medicines according to a prescription from a physician.
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Damages for patent infringement
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Possible
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Not possible
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Awarding of damages as long as the infringer’s subjective intent is proved.
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Awarding of damages directed to infringer’s profits.
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Punitive triple damages.
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Awarding of damages for patentee’s loss of profits.
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Compensation for diminished business reputation.
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Awarding of damages for reasonable royalties collected from patent licensing.
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The above changes may affect not only applications filed after the implementation of the new law, but also current applications that are still pending after January 1, 2013.
For any questions relating to this topic, please contact us at cjchen@tsailee.com.tw |