Draft Amendment of Taiwan’s Patent Act is Far-reaching and Revolutionary

On December 30, 2020, Taiwan’s IP Office published a draft amendment to some provisions of the Patent Act.  It substantially changes the current examination and re-examination processes concerning patent applications and invalidation cases, as well as related remedial procedures.

For the present, Taiwan has a two-stage examination system: preliminary  examination by one Examiner and re-examination by a second Examiner.  At either stage, if the Examiner intends to reject a patent application, he/she will  issue at least one Official Letter to allow the Applicant to optionally file observations/amendments before issuing the formal rejection. According to the draft amendment, a Committee, which will be operating under the name of “Committee for Review and Dispute Resolution” is to be set up to replace existing re-examination mechanism for review of all cases formally rejected at the preliminary stage.

The second role that the Committee plays is to examine invalidation actions so that an invalidation case is not examined by a single examiner, as is the current practice. According to the draft, examination of invalidation actions will be conducted primarily through oral hearings, and the decisions rendered by the Committee are final and conclusive.

The Committee is composed of senior patent examiners and legal experts designated by the IP Office to ensure that the cases under the Committee’s review/examination are handled with professional excellence. “Legal experts” refer to staff members of the IP Office who have substantial experiences dealing with legal affairs, and matters related to appeal or litigation.

Specifically, three or five members from the Committee will form a panel which conducts the review/examination matters; one of them is to be appointed as the presiding examiner to coordinate overall matters and ensure that the review/examination process is conducted efficiently. If a case brought to the Committee’s review relates to a formally dismissed procedure of simple nature, it may be exceptionally examined and decided by a single member appointed by the Committee.

In general, the types of cases to be reviewed/examined by the Committee include the following:

(i)    formally rejected patent applications;
(ii)   formally rejected applications for patent term extension;
(iii)  amendments;
(iv)  other formally dismissed procedures;
(v)   invalidation actions; and
(vi)  invalidation actions against the granted patent term extensions.

Another significant change introduced into the draft amendment is the abolishment of appeal proceedings.  If the applicant of an application or the losing party of an invalidation action is dissatisfied with a decision rendered by the Committee, he/she can no longer attend appeal proceedings but should directly file a litigation with the court to seek judicial review of the decision. The court system for judicial review remains to be a two-instance system; however, the litigation will shift from administrative to civil proceedings.

The draft amendment is far-reaching and revolutionary.  It will bring about an overhaul to existing legal framework and practice and thus necessitates extensive revision to enforcement rules, examination guidelines and the like.  As the draft amendment is still in a preliminary form and the specifics of the amendment have yet to be finalized, it might take several years for the draft to go through the legislative process and put into force. 

Any further development will be updated.

The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.