Amendments to Taiwan Enforcement Rules of Patent Act

The Ministry of Economic Affairs (MOEA) has bulletined that the Enforcement Rules of the Patent Act have to be amended and revised to correspond to the enforcement of the new Patent Act on January 1, 2013 and also in light of amendment to Patent Act effective on June 11, 2013 for clarifying relevant matters.  The amendments to the Enforcement Rules of the Patent Act are summarized as follows.

1.  Calculation of duration of grace period

Calculation of the six-month grace period as set forth in the 3rd paragraph of Article 22 and the 3rd paragraph of Article 122 should begin from the second day of the occurrence date of each event listed in the above provisions to the date on which all required documents for a patent application are provided and submitted, namely the filing date of the patent application.  (amended Article 13 and Article 46)

2.  Relevant provisions in response to Article 32 of the Patent Act

With respect to two patent applications filed for both invention and utility model for the same creation by one applicant on the same date, the two applications shall have the same filing date and the same priority date if the applicant is to claim priority.  In addition, according to the 1st paragraph of Article 32 of the Patent Act, the aforesaid applicant should make declaration or statement with regard to the other application in each of the two applications.  In the amended provisions, the foregoing matters should be stated at the time of filing and also be listed and published in the Patent Gazette.  Also, the following matters are specified in the amended provisions: the consequence of the applicant’s failure to make aforesaid declaration, the consequence of the utility model patent right having become extinguished or revoked by a final and binding decision, and no publication to be made for the approved invention application if the utility model patent right becomes extinguished or revoked by a final and binding decision after the invention patent application has been approved.  (amended Article 16, Article 26-2, and Article 83)

3.  Disposal of paid patent certificate fee for earlier application filed with priority

For the applicant who files a subsequent patent application and makes a priority claim based on an earlier patent application he/she has already filed, when the applicant pays patent certificate fee or the first-year patent annuity for his/her earlier application in accordance with the 1st paragraph of Article 52 and Article 120 of the Patent Act, the patent agency should notify the said applicant to withdraw either the priority claim for the subsequent patent application or the request for the patent agency’s issuing the patent certificate for his/her earlier application within a designated time period.  Where the said applicant fails to withdraw either of the above-mentioned priority claim or request, no publication shall be made for the approved earlier patent application and the patent agency will notify the applicant to request for refund of the paid patent certificate fee and first-year patent annuity.  The foregoing added provision is to avoid double patenting.  (amended Article 26-1) (October 2014)
/CCS