Patent Attorney Act Amendment Passes Third Reading at Taiwan’s Legislative Yuan

The amendment to partial provisions of the Taiwan Patent Attorney Act successfully underwent its third reading at the Legislative Yuan.  Following its promulgation on July 1, 2015, the amended Patent Attorney Act will come into force six months later on January 1, 2016.  The key points of this amendment are summarized as follows. 

1.  Administrative procedures are streamlined.

The required registration with competent authority for a patent attorney’s practice is repealed, and a patent attorney can apply for a patent attorney license with the competent authority after and only after having successfully completed his/her pre-practice training. 

2.  Employment by registered corporations is allowed. 

Patent attorneys now are allowed to work for registered corporations, in addition to setting up a law firm or being employed by the law firms specializing in patent related matters. 

3.  Scope of patent attorney practices is enlarged. 

In view of the fact that services and practices of patent attorneys are professional and important, patent attorneys now can be retained to act for clients also in patent appeals, administrative litigations and can be engaged in patent infringement analysis and patent affairs counseling. 

4.  Patent attorneys are required to take in-service training. 

Patent attorneys and patent agents are now required to take in-service training continuously and submit to the competent authority the certificate proving their completion of the training every two years, so as to elevate their professional knowledge.  The Taiwan IPO will formulate relevant guidelines. 

5.  Punishment for patent attorneys’ malpractice becomes heavier.

In order to ensure operation of the mechanism, the amendment imposes heavier punishment for malpractices and revises the types and scenarios of malpractices:  any person without a patent attorney certification is retained to carry out practices specified in the Patent Attorney Act to make profits, or a patent attorney lends his/her seal or certification to any other person to handle relevant matters, etc..  Under this amendment, malpractitioners will directly receive criminal punishment without receiving administrative sanction beforehand as the current Act stipulates, which is to effectively deter patent attorney malpractices.  (June 2015)
/CCS