The Taiwan Intellectual Property Office (TIPO) announced the Draft Amendment to Certain Articles of the Patent Act on September 11, 2024 (hereinafter referred to as the Draft Amendment), explaining that the primary goal of the Amendment is to respond to the rapid growth of emerging digital industries and the increasing diversity in image design through digital technology. Further, by aligning with international trends in respect to design protection and considering the practical needs of industry, it is proposed to revise the design patent system to establish a more comprehensive framework. In the meantime, with reference to the most recent judicial practice, there are made necessary amendments so that the rightful patent applicants could reclaim their rights through civil procedures.
Specifically, the Draft Amendment focuses on two main areas:
- To relax several restrictions on design patent protection, which include:
i. Expansion of the Scope of Design Protection: The scope of design protection will expand to include image designs created using digital technology, and lift the restriction that image designs must apply to "articles."
ii. Allowing for a consolidated application for similar designs: A "consolidated application for multiple similar designs" system will be introduced by amending the relevant stipulations on revisions, invalidation proceedings, and other related matters.
iii. Extension of the grace period from six months to twelve months within which to file a design application irrespective of the prior publication or disclosure of the design.
iv. Extension of the time limit to file design divisional applications. It is admitted, inter alia, to file a divisional application within the three months from receipt of either the approval of a design application or a re-examination decision.
- The disputes over the right to apply for a patent and patent rights shall be solely resolved through civil procedures. The Draft Amendment has added relevant provisions to exclude disputes over “the right to apply for a patent” or “the ownership of patent rights” as grounds for invalidation, clearly stipulating that a rightful patent applicant should resolve such disputes through civil procedures to reclaim his/her rights.
What is noteworthy further is that the Draft Amendment does no longer include any layout related to the consolidation of relief levels or adversarial review systems as contained in the Amendment to the Patent Act submitted by the Executive Yuan to the Legislative Yuan in March 2023. For instance, the Draft Amendment does not stick to the consolidation of relief levels and establishment of adversarial review system, including the founding of an "Appeal and Dispute Review Committee" and the abolishment of administrative appeal remedies in case of dissatisfaction with the final rejection rendered by the TIPO. In other words, to create specialized "Appeal Litigation" and "Dispute Litigation" systems is no longer an option. Furthermore, the Draft Amendment does not include any provisions to shift remedial actions from administrative procedure to a procedure analogous to civil litigation. Consequently, the Supreme Administrative Court, rather than the Supreme Court, remains to be designated as the court of final appeal.
The proposal of the consolidation of relief levels and adversarial review system can be traced back to 2001, which underwent multiple discussions, faced various challenges in hearings. After approval by the Executive Yuan, the proposed Amendment was submitted to the Legislative Yuan for review, but ultimately aborted due to the expiration of the legislative session without further examination.
The Draft Amendment proposed this time is to remove the relevant stipulations on consolidating relief levels and adversarial review system, which suggests a shift away from this once widely discussed amendment direction in the past years.
The Draft Amendment, although not as controversial as the Amended Version of March 2023, still contains some contentious issues. For example, there are divided opinions concerning the resolution of disputes over the right to apply for a patent and patent ownership through administrative or civil proceedings. Therefore, the subsequent development of the draft amendment requires further close observation.