After incorporating and integrating comments from all sectors around this country, Taiwan IPO drafted and proposed an amendment to part of the articles of Taiwan Patent Act to correspond to the relaxation of national economic laws and regulations and also to operate in coordination with relevant international regulation adjustments and further to complete examination practices of Taiwan.
Highlights of the proposed amendment are summarized below.
1. A grace period of 2 months for claiming priority is proposed in the amendment to be applicable to patent applications whose applicants unintentionally fail to claim priority in Taiwan within 12 months from the filing date(s) of their first application(s).
2. It is proposed in the amendment that a divisional application can be filed within a time period of three (3) months (extended from 1 month) from receipt of the notice of allowance no matter whether the application is granted during the preliminary examination or reexamination stage, and that the foregoing stipulation applies also to utility model and design patent applications.
3. Under this amendment, additional 2 months are allowed to reinstate the request for substantive examination of invention patent applications after lapse of the statutory 3-year time limit of request for substantive examination, provided that the applicant’s failure in meeting the time limit is not an intentional one.
4. The amendment adds legal types of use of the file wrapper in connection with a laid-open or approved patent application, which are reproduction, public transmission, and translation of the file wrapper.
5. The amendment introduces provisions that if a patentee assigns the patent right in and to his/her patent after having granted a license and recorded the license with the Taiwan IPO, the assignee of the patent shall succeed to the license agreement.
6. It is proposed in the amendment that supplementary grounds or evidence shall be submitted within a statutory time limit and delayed submissions will not be examined. Also, limitations and exceptions are provided in the amendment for patentees that may request for amendment of claims during invalidation proceedings.
7. Request for post-grant amendment of a utility model patent may be filed when and only when (a) there is a pending invalidation action filed against the utility model patent, (b) a request for accessing a technical evaluation report on the utility model patent has been filed but has not been granted, and (c) a patent infringement lawsuit regarding the utility model patent is pending at court. Also, request for post-grant amendment of a utility model patent shall be subject to substantive examination.
8. The patent term of design patents is extended from 12 years to 15 years.
9. Under current Patent Act, patent files such as application documents, description, claim(s), abstract, drawing(s) shall be kept permanently while it is proposed in this amendment that the only the patent files with preservation value shall be kept permanently and the others shall be preserved for a period of no more than thirty (30) years under appropriate categories.
10. The amendment incorporates and revises other provisions to complete the legal regime for patents.
11. The amendment also provides transitional provisions. (May 2018)