On 29 November 2011, the Congress passed the biggest overhaul amendment of the decade to Taiwan Patent Law. While the effective date thereof is still undetermined, it would be best that applicants make early preparations for the changes to come. The most significant changes relate to the new design patent, which is now literally renamed as “design patent” and encompasses a wider array of subject matters including Icons & GUIs, derivative designs, as well as article’s portion with specific design features or multiple articles of the same category and customarily sold as a set.
Pharmaceutical patent applicants would be interested to know that supplementary patent certificates are given more lucid regulations such as only one patent extension term is permitted and ought to be based on the first government approval, which again can be used for seeking patent extension limiting to only once. Generic drug companies would be happy to note that no infringement will result from research, trials, and other necessary acts (like pre-clinical trials and clinical trials), if they are conducted for the purpose of obtaining local pharmaceutical registration or foreign marketing approval.
Prosecution and invalidation actions will see more de-regulation and flexibilities. For example, the 6-month grace period for patent filing will apply also to applicant’s publication, even of non-experimental or commercial nature. Applicants who unintentionally fail to claim a priority date and even patentees who unintentionally lapse the maintenance fee payment term will have a chance to be rescued by a special resumption proceeding. Provisional applications will be allowed to be filed within 30 days after a preliminary issuance of the patent. Translation errors are first entering the lists of amendment and even post-amendment of specification and claim. Challengers of the patent may attack the validity of particular claim(s) and the patent office will need to render its decision on a claim-by-claim basis.
There would be changes in the landscape of patent infringement wars, where reasonable royalty will become an additional option for patentees when calculating damages, alongside lost profits and infringer’s profit. Under the infringer’s profit approach, defendants will no longer bear the burden of proving its overhead costs as the current law requires. Meanwhile, the new act removes punitive damages for intentional infringement, but stresses that damages claim will not stand where the defendant lacks negligence.
It is generally believed that the said amendment will become effective after one year since its enactment.