In mid-May of 2018, a new draft bill of Taiwan’s Patent Law was published by Taiwan’s IPO (TIPO). The primary amendments introduced into this draft bill are summarized below:
- A grace period is allowed for claiming priority and requesting substantive examination
According to the current Patent Law, priority can be claimed within 12 months for an invention or utility model application from the filing date, and a priority claim must be filed within 6 months from the filing date for a design application. The draft bill proposes a grace period of two months for claiming priority.
While a request for substantive examination must be filed within three years from the filing date, according to the current Patent Law, a grace period of two months is likewise proposed by the draft bill.
- Relaxation of the time limit to file a divisional application
According to the current Patent law, a divisional application can be filed any time prior to issuance of the Notice of Allowance or Second (Final) Office Action, or, within thirty days from the date of receipt of the Notice of Allowance if the application is allowed without entering the re-examination stage.
The draft bill proposes that a divisional application can be filed within three months from receipt of the Notice of Allowance no matter whether the application is allowed during the preliminary examination or re-examination stage. This stipulation applies to not only invention, but also to design applications.
- Extension of the duration term of design patents
The duration term of a design patent will be extended from 12 years to 15 years according to the draft bill.
- A time limit is set to file a supplementary invalidation brief, evidence, a counterstatement, and/or amendment of claims during invalidation proceedings
Under the current Patent Law, a supplementary invalidation brief, evidence, a counterstatement, and/or amendment of claims can be filed any time before the TIPO issues a Decision, causing invalidation proceedings to drag on. It is now proposed in the draft bill that an invalidation petitioner must submit supplementary briefs and/or evidence within three months from the date the invalidation action is filed, or within one month from the receipt of any notification from the TIPO. Patentees filing counterstatements and/or amendment of claims may only do so before a deadline designated by the Patent Office, with an exception given to amendment of claims containing only deletions, which can be filed at any time.
- Post-grant amendments for a utility model registration are subject to substantive examination and can be filed only at certain stages
Under the current Patent Law, after a utility model application matures into a registration, the registration holder may file a request for post-grant amendment “at any time.” However, for an amendment of this kind, the TIPO only conducts formality examination unless an invalidation action has been filed against the utility model registration. Accordingly, if it occurs that a utility model registration holder needs to submit a petition for claim amendment before the IP Office after he has filed an infringement lawsuit, and the accused infringer, in turn, filed a defense of patent invalidity as a counter-measure before the court, the petition for claim amendment can be dismissed for failing the formality test even if the scope of the amended claims does not go beyond the disclosure of the specification as originally filed and is narrower than the scope of the original claims. The draft bill now proposes that a request for post-grant amendment can be filed only at the following stages: (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. However, all the post-grant amendments filed will be examined in a substantive manner.
- Miscellaneous
The draft bill proposes that for a joint-applicant who waives his/her share of the right to a patent/a patent application, or who has deceased without an heir, the share of his/her right will be distributed to other joint applicant(s) on a proportional basis. Further, in order to protect the right of a licensee, it is now proposed in the draft bill that where the patentee of a patent assigns his right to the patent to a third party after granting a license to practice his patented invention to another third party, the assignee shall succeed to the license agreement on the condition that the license was recorded with the IP Office.
Under the current Taiwan Patent Law, when two or more patent applications for one invention are filed on the same day by one and the same applicant, or by two applicants, the applicant is obliged to choose one of the patent applications, or the two applicants need to reach an agreement through negotiation and to inform the TIPO of the agreement. The draft bill proposes that if no application is chosen from the two or more applications, or the two applicants fail to reach an agreement, no patent will be granted, and, if any patents were already granted, they will be revoked ex officio.
-----------------------------------------------------------------------
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.