Taiwan’s Intellectual Property Office (TIPO), with a view to addressing the problems and deficiency inherent in the current patent system, and to strengthening the protection of patent rights, has accomplished a revision of the Patent Act. On December 30, 2020 a draft Amendment to some provisions of the Patent Act was published for public inspection. The main amendments are substantially as follows:
1.The grace period of six (6) months after the disclosure of the design in a printed publication or an exhibition and before filing will extend to twelve (12) months.
2.For the present, Taiwan has a two-stage examination system: (i) preliminary examination by one Examiner; and (ii) re-examination by a second Examiner. At either stage, if the Examiner intends to reject a patent application, he/she will mostly issue an 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 within TIPO 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 directly examine invalidation actions so that an invalidation case is not examined by a single examiner, as is the current practice. According to the draft amendment, 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 or 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 TIPO 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 panelist 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) post-grant amendments;
(iv) other formally dismissed procedures;
(v) compulsory license recordals conducted based on an order;
(vi) invalidation actions;
(vii) invalidation actions against granted patent term extensions; and
(viii) compulsory license recordals conducted at request .
Currently, if the applicant of a patent application or the losing party of an invalidation action is dissatisfied with a Decision rendered by the IP Office, he /she may file an Appeal within thirty (30) days from receipt of the Decision and in turn, an Administrative Litigation, if necessary, to seek judicial review of TIPO’s Decision.
A significant change introduced into the draft amendment is the abolishment of appeal proceedings. If the applicant or the losing party is dissatisfied with a decision rendered by the Committee, he/she can no longer attend appeal proceedings but should directly file a civil litigation with the IP and Commercial 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 opposing party, not the IP Office, shall be named as the defendant in an invalidation action. On this score, the two parties may directly participate in the oral hearings in the capacity of the plaintiff and the defendant and express their opinions in an exhaustive manner. In addition, the losing party, if not satisfied with the Decision rendered by the Committee, may further appeal the case to the Supreme Court.
3. Under the current practice, in the case of a dispute over the ownership of patent rights, an interested party may initiate an invalidation action to cancel the concerned patent, alleging that the patent owner is other than the person entitled to file the invention patent application. On the other hand, the entitled person may file a new patent application for the same invention within two (2) months from the date the concerned patent is canceled while the new application can take advantage of the filing date of the canceled patent. In lieu of filing an invalidation action, the entitled person may attempt to resolve the issue via the routes of mediation, arbitration or obtaining a confirmatory judgment. A change-of-name recordal may be performed at the IP Office after issuance of a court judgment in favor of the entitled person. In other words, the dispute over ownership of patent rights can be resolved via either filing an invalidation action with the IP Office or a civil lawsuit with the court.
To find out the genuine ownership of patent rights mostly involve private rights, contractual disputes, etc. Therefore, it appears that the civil court, rather than TIPO, an administrative mechanism, may be more equipped to make investigations. According to the draft Amendment, only the civil court will have the right to adjudicate on an ownership dispute. A court decision in favor of the entitled person can be based on to conduct a change-of-name recordal with the IP Office. There is no longer a need for the entitled person to file a patent application after the concerned patent is canceled. However, whether the entitled person is willing to inherit a patent, the scope of which is not circumscribed at his own discretion, is another issue worth observing.
An overhaul change to existing legal framework will be brought about by the proposed amendments highlighted above, especially the replacement of administrative proceedings by civil proceedings. Thus, it remains to be seen as to whether the IP Office will look for further opinion from the public and propose additional modifications.
Any further development will be updated.