The Draft Amendment to Taiwan Patent Law was passed by Taiwan’s Legislature on April 16, 2019. The Amended Patent Law will take effect on a later date to be decided by the Government.
The most significant changes are:
- Extension of the Duration Term of Design Patents
According to the Amended Patent Law, the duration term of a design patent will be extended from 12 years to 15 years after the Amended Patent Law takes effect. For a design patent which has not expired when the Amended Patent Law takes effect, its duration term will be automatically extended to 15 years.
- Relaxation of the Time Limit to File a Divisional Application after Issuance of the Notice of Allowance
The applicant will be allowed to file a divisional application from an invention patent application or a utility model patent application within three months, in lieu of 30 days, from receipt of the Notice of Allowance. Please see the comparison table below:
Questions
|
Old
Patent Law
|
Amended Patent Law
|
Can a divisional application be filed from a pending invention, utility model or design patent application?
|
√
|
√
|
Can a divisional application be filed from an invention patent application which is allowed at the preliminary examination stage?
|
√
|
√
|
Can a divisional application be filed from an invention patent application which is allowed at the re-examination stage?
|
X
|
√
|
Can a divisional application be filed after a utility model application is allowed?
|
X
|
√
|
Can a divisional application be filed after a design application is allowed?
|
X
|
X
|
-
Post-Grant Amendment to a Utility Model Patent is Subject to Substantive Examination but Can be Filed only at Certain Stages
Questions
|
Old
Patent Law
|
Amended Patent Law
|
Is a utility model patent application subject to examination as to novelty and inventive step?
|
X
|
X
|
Will a utility model patent application mature into a utility model patent once the formalities are fulfilled?
|
√
|
√
|
Is a petition for post-grant amendment filed for a utility model patent generally subject to formality examination only? Is a utility model patent holder allowed to file a post-grant amendment at any time?
|
√
|
X
|
Is a petition for post-grant amendment filed for a utility model patent subject to substantive examination and can be filed at certain stages?
|
X
|
√
|
According to the old Patent Law, a petition for post-grant amendment filed in the absence of an invalidation action was only subject to formality examination, and a utility model patent holder was allowed to file a petition for post-grant amendment “at any time.”
When conducting formality examination, the IP Office generally would deem a slight modification of the wordings in the recitation of the claims to be substantial change, not formality change. As such, it was quite difficult, if not impossible altogether, for a utility model patent holder to conduct a post-grant amendment after he had filed an infringement lawsuit and the accused infringer claimed a defense of patent invalidity before the court but did not file an invalidation action with the IP Office.
To tackle the problem at its roots, all post-grant amendments, according to the Amended Patent Law, shall be examined in a substantive manner but can be filed only at certain stages, namely:
(i) |
when an invalidation action has been filed against a utility model patent and is still pending; |
(ii) |
when a request for obtaining a technical evaluation report on a utility model patent has been filed but the IP Office has not yet issued the evaluation report; or |
(iii) |
when a patent infringement lawsuit filed on the basis of a utility model patent is pending in court.
|
- Stringent time limit in invalidation proceedings
Under the old Patent Law, a supplementary invalidation brief, evidence, a counterstatement, and/or amendment of claims could be filed any time before the IP Office issues a decision, causing invalidation proceedings to drag on.
It is now stipulated in the Amended Patent Law that an invalidation petitioner must submit supplementary briefs and/or evidence within 3 months from the date the invalidation action is filed, or within 1 month from the receipt of any notification from the IP Office.
Filing amendment of claims in an invalidation action is also restricted. Under the amended law, the patentee can only do so before a deadline designated by the IP Office for submitting a counter-argument, with an exception given to amendment made due to a pending civil litigation, which can be filed at any time.
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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.