Newsletter
Highlights of Amendment Draft to Some Articles of the Patent Act
The IPO published the Articles of the Patent Act Amendment Draft on December 27, 2017 and held two public hearings regarding the Amendment Draft on December 21, 2017 and January 15, 2018, respectively. However, the Amendment Draft has not been passed. This amendment includes the following highlights:
1. The period of claiming international priority is to be changed from 12 months to 14 months (Article 28). The current Patent Act stipulates that the deadline for claiming international priority is 12 months, which is proposed to be extended to 14 months in this amendment draft. The provisions are summarized as "Where, unintentionally, no priority claim is made for a patent application within a specific period, the application or priority shall be filed or claimed within 2 months after the expiration of said period, and the fees for claiming priority shall be also paid.
2. The timing restrictions on filing divisional applications are relaxed, including inventions, utility model patent and design patent applications. The time period for filing a divisional application is changed from 1 month to 3 months (Articles 34, 107, 120 and 142). The time period for filing a divisional application referred to in the current Patent Act is 30 days after receipt of an allowance decision on the original application; however, a divisional application cannot be filed after receipt of a re-examination decision. The amendment draft proposes to extend the time period to 3 months after receipt of an allowance decision of either first examination or re-examination.
3. The provision regarding restoration of substantive examination for an invention patent application is newly added to the amendment draft (Article 38). The current Patent Act stipulates that if the substantive examination for an invention patent is not filed within the legal period of 3 years, the patent application for the invention shall be deemed as withdrawn. The amendment draft proposes to add a provision on restoration, which stipulates that the applicant may request substantive examination for an invention patent and pay additional application fees within 2 months upon the expiration of the stipulated term.
4. A provision regarding legitimate uses of laid-open patent applications or published patents is newly added to the draft amendment, including reproduction, public transmission and translation (Article 47). The current Patent Act stipulates that any person may apply to view, transcribe, photograph, or photocopy the written materials in connection with a patent application which has been published. The amendment draft proposes to add a provision that any person may apply for reproduction, public transmission or translation of all the files in connection with a patent application which has been published.
5. The patent term of a design patent shall be changed from 12 to 15 years (Article135). The current Patent Act stipulates that the patent term of design patents is 12 years. In this amendment draft, the patent term is proposed to be extended to 15 years.
6. In order to encourage implementation of patent rights and enhance the value of patents, an open license system shall be introduced to promote the patent applications (Article 63). The draft amendment adds a provision that the patentee may inform the Specific Patent Agency in writing that it is willing to authorize someone to implement its patent right.
7. The provisions on post-grant amendment of a utility model are to be amended to clearly stipulate that for utility model applications, a post-grant amendment can be filed during invalidation action, filing of utility model technical report and civil litigation action and the post-grant amendment should be substantively examined. The current Patent Act adopts formal examination on the post-grant amendment of utility model without specifying the time when post-grant amendment is permissible. The amendment draft stipulates that substantive examination for post-grant amendment of a utility model patent should be adopted and specifies the when post-grant amendment is possible.
8. The legal effect of submitting supplementary reasons or evidence for an invalidation case and a request for post-grant amendment during the examination period of an invalidation case are clearly stipulated (Articles 73, 74, 77). The current Patent Act stipulates that the reason for an invalidation action or provision of evidence shall still be considered before a decision to approve the invalidation action is issued. The amendment draft stipulates that the reason or evidence for invalidation action shall be provided within 3 months upon filing the invalidation action or within 1 month upon receiving the notice from the Specific Patent Agency. The current Patent Act does not specify time points of requesting a post-grant amendment during the invalidation action. The amendment draft stipulates that, except for post-grant amendment based on deletion of claims, a patentee may apply for post-grant amendment only within the time periods during submission of response or supplementary response.
The amendments are made for harmonization with both domestic and international relaxation of economic regulations, and for practical improvements to the procedures of substantial examination. It loosens restrictions on when applications can be submitted for priority, division and substantial examination, but imposes more stringent restrictions on submission of response, evidence or post-grant amendment during invalidation action, so as to avoid undue delay in the prosecution of an invalidation action.