Draft amendment to partial provisions of Taiwan Patent Act submitted to Executive Yuan
Subsequent to Taiwan IPO’s releasing and announcing the draft amendment to partial provisions of the Taiwan Patent Act on May 17, 2018, the notice duration of the draft amendment for public consultation had expired on July 16, 2018 and there had been a lot of advices and opinions contributed from all sectors. Taiwan IPO, through discreet deliberation and widespread consultation, decided to adjust the draft amendment and select some provisions whose amendment is more pressing and submit those provisions to the Taiwan Executive Yuan for review and deliberation. Taiwan IPO’s responses to all sectors’ advices are compiled and consolidated in a special section at Taiwan IPO’s website. Highlights of the draft amendment to the Taiwan Patent Act submitted to the Executive Yuan are summarized as follows.
1. Relaxation of the time limit and applicable scope for filing a divisional application
As proposed in the amendment, a request for division of application may be filed after receipt of the allowance decision of either the first examination or re-examination of the invention patent application, and the same stipulation shall apply also to utility model patent applications. The timing restriction for filing a divisional application is also extended from 30 days to 3 months after receipt of an allowance decision. Also, under the draft amendment, the divisional application shall be filed only for an invention that is different from that revealed in the description or drawing and the claim approved in the original patent application; if there is any violation of this stipulation, the proposed divisional application will be rejected and there will be a ground for invalidation to stand (Article 34, 46, 71, 107, 119, and 120).
2. Acceleration of invalidation proceedings examination
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 (Article 73, 74, and 77).
3. Post-grant amendments of utility model patent
Under the current Patent Act, after a utility model application matures into a registration, the utility model patent holder may file a request for post-grant amendment at any time, for which the draft amendment proposed a time limit for post-grant amendment in the stages that (a) an invalidation action has been filed against the utility model registration and is pending, (b) a request to obtain a technical evaluation report on the utility model registration has been filed but the report has not yet been issued, and (c) a patent infringement suit based on the utility model registration is pending in court. Moreover, all the post-grant amendments filed will be examined in a substantive manner (Article 118).
4. Extension of duration term of design patents
The amendment proposes the patent term of a design patent shall be extended from 12 to 15 years (Article 135).
5. Patent files Preservation
Under the current Patent Act, patent files such as application documents, description, claim(s), abstract, drawing(s) shall be kept permanently. It is proposed in this amendment that 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, which is to solve the file storage space problem (Article 143).
6. Other provisions to complete the legal regime for patents
This amendment clarifies that failure in submission of priority documents within sixteen months commencing from the earliest priority date will disallow priority reinstatement. Also, the amendment proposed to remove the statutory circumstances that would easily cause misunderstanding for filing an invalidation action of any granted patent term extension (Article 29 and Article 57).
7. Transitional provisions
The draft amendment sets forth transitional provisions, which provide that the patent applications, invalidation actions, and amendments pending before enforcement of this proposed amendment shall be all subject to the amended provisions, and also that principles or guidelines applicable to the amended regulations, such as, new time limit and scope for filing a divisional application and extended design patent term, will be formulated separately (Article 157-2~Article 157-4). (November 2018)