Bill Passed to Extend Grace Period to
a Total of 12 Months

published on 2 Feb 2017

The legislative branch of Taiwan passed a bill on December 30, 2016 amending the term of the novelty grace period from six (6) months to twelve (12) months and relaxing the applicability of the law.

According to the amended §22(3) of the Patent Act (the Act), any events, either out of the applicant’s consent or not, shall not be deemed as loss of novelty, provided that a patent application for invention or utility model is filed within twelve (12) months after the date of the event's occurrence. Whilst the amended §122(3) of the Act prescribes the same period for design applications staying at six (6) months for any intentional or unintentional events of disclosure.

Before the amendment, §22(3) of the Act could be applied only if the disclosure was owing to some specific events, voluntary or involuntary, and the event had occurred within six (6) months prior to the patent application. The circumstantial application of the grace period became a restriction for inventors to take advantage of when attempting to file for a patent. It is because nowadays pre-filing disclosures by means of various commercial or academic activities are common. Novelty may be easily lost due to competitor’s act or the applicant’s own act. The amended §22(3) of the Act relaxes the types of admissible events, abolishes administrative requirement in the old §22(4) of the Act and extended the applicable time period to be harmonized with the practice of some neighbor countries.

Enterprises and academic institutions are expected to benefit from the amendment since their pre-filing publication activities of all sorts will not become a statutory novelty bar. Furthermore, in account of an international implication, the amendment will bring Taiwan’s patent system more in conformity with that of some major jurisdictions in the world.

Interpretation of grace period clause defines an “applicant” as being the actual applicant, the assignee, the assignor, or a third person authorized by the assignee. Also, by interpretation, grace period clause defends not only loss of novelty but lack of inventiveness.

Note that the publication of a national or foreign patent application pursuant to the patent regulations of the respective jurisdiction, which is foreseeable, does not preclude loss of novelty, as required in §22(4). 

• The amendment was promulgated on January 18 by the President and became effective on January 20. However, the date of enforcement will be subject to the administrative order issued by the Executive Yuan. The new provision will apply to events of technology disclosures occurred within 12 months prior to the day of enforcement.

for any questions relating to this topic, please contact us at cjchen@tsailee.com.tw