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Amendment of ROC (Taiwan) Patent Act



Amendment of ROC (Taiwan) Patent Act
 
The Taiwan Patent Act currently in effect was amended on 18 January 2018, which took effect on 1 May 2018. For the purpose of relaxing some of the requirements in the Patent Act, referring specifically to adjustments in international patent laws and practice and upgrading patent examination practice in Taiwan, the Legislative Yuan amended the Patent Act on 16 April 2019. The amendment was announced by the President on 1 May 2019 with a date of implementation to be decided by the Executive Yuan. On 31 July 2019, the Executive Yuan made an announcement stating that the amendment of the Patent Act shall take effect on 1 November 2019. The major changes in the amendment are as follows:
 
I.           Reinstatement Procedure for a Default in Complying with Priority Claim-related Deadlines (Article 29 of the Amended Patent Act)
 
According to the current Patent Act (Article 29), due to an “unintentional reason, where a patent applicant fails to claim priority at the time of patent filing” or “where a priority claim is considered as not to have been made pursuant to the Patent Act”, the patent applicant may, within 16 months from the earliest priority date, file a reinstatement procedure, pay the official fee and make priority claim so as to revive the said priority claim. Under the current Patent Act, “where a priority claim is considered as not to have been made pursuant to the Patent Act” refers to one of the following conditions: (1) the priority claim was not made at the time of patent filing and such priority claim is considered to not have been made, (2) although the priority claim was made at the time of patent filing, the applicant failed to declare the filing date and the country of filing for the priority application at the time of patent filing and such priority claim is thus considered not to have been made, and (3) the applicant failed to submit a priority document within the deadline and the priority claim is thus considered not to have been made.
 
Since the deadline for filing a priority document is the same as that for filing a reinstatement procedure as stated (i.e., within 16 months from the first priority date), where there is a default of complying with the deadline for filing a priority document, reinstatement shall not be allowed based on an “unintentional” argument. Therefore, through the amendment of the Patent Act, the grounds for filing a reinstatement procedure are limited to the situations mentioned in Items (1) and (2) above. Item (3) (in which the applicant failed to submit a priority document within the deadline and the priority claim is considered not to have been made) was deleted.
 
II.           Divisional Patent Filing (Articles 34, 46, 107 & 119)
 
A.  Invention Patent Applications (Articles 34 & 46)
 
1.Timing & Deadline for Filing (Item 2, Paragraph 2, Article 34)
 
According to the current Patent Act (Article 34), where an invention patent application covers in substance two or more inventions, application(s) for divisional filing(s) can be made either upon request by the Taiwan Intellectual Property Office (TIPO) or initially by the patent applicant. Divisional filing must be made at one of the following time periods: (1) before a reexamination decision is issued, and (2) within 30 days from the date of receiving an allowance decision issued for the parent patent application at the first examination stage (but not at the reexamination stage).
 
To enable applicants to utilize divisional filing approaches more flexibly and to protect applicants’ rights and interest, through the amendment of the Patent Act, the time period for filing divisional applications has been expanded so that a post-allowance divisional filing can be made after allowance of the parent patent application at either the first examination stage or the reexamination stage. In addition, the deadline for filing a post-allowance divisional application has been extended from the original 30-day deadline to 3 months from the date of receiving the allowance decision.
 
According to Article 157-3 of the Patent Act, for an invention patent application allowed before 1 November 2019, if the deadline for filing a post-allowance divisional application under the amended Patent Act (Item 2, Paragraph 2, Article 34) has not expired when the amended Patent Act takes effect (i.e., 1 November 2019), the applicant may proceed with a post-allowance divisional filing under the amended Patent Act.
 
2.Moving Relevant Rules into Amended Patent Act (Paragraphs 6 & 7, Article 34)
 
Through the amendment of Patent Act, the content of Article 29 of the Enforcement Rules has been moved into the amended Patent Act (Paragraphs 6 & 7, Article 34):
 
“Where a divisional patent filing made based on Item 2, Paragraph 2 is filed, the divisional filing shall cover an invention which is disclosed in the specification and/or drawings of the parent patent application but is different from that disclosed in the approved claims of the parent patent application. For a divisional patent application, the examination proceeding shall continue from the examination proceeding of its parent patent application before patent allowance (Paragraph 6)."
 
The specification, claims or drawings of a parent patent application already allowed shall not be changed. The said parent patent application shall be published based on the claims and drawings on record at the time of allowance (Paragraph 7).”
 
Paragraphs 6 and 7 as stated above also apply to new utility model divisional patent applications.
 
3.Reasons for Rejection of an Invention Patent Application (Article 46)
 
To cope with the amendment of Paragraph 6, Article 34, through the amendment of the Patent Act, it is clearly stated that a violation of the front part of Paragraph 6, Article 34 (as quoted above) shall be grounds for rejecting a divisional patent application:
 
“Where a divisional patent filing made based on Item 2, Paragraph 2 is filed, the divisional filing shall cover an invention which is disclosed in the specification and/or drawings of the parent patent application but is different from that disclosed in the approved claims of the parent patent application. For a divisional patent application, the examination proceeding shall start from the examination proceeding of its parent patent application before patent allowance (Paragraph 6).”
 
4.Reason for Filing a Cancellation Action Against an Invention Patent (Paragraph 1, Article 71)
 
Through the amendment of the Patent Act, a violation of the front part of Paragraph 6, Article 34 (as quoted above) is newly added as grounds for filing a cancellation action against an invention patent application:
 
“Where a divisional patent filing made based on Item 2, Paragraph 2 is filed, the divisional filing shall cover an invention which is disclosed in the specification and/or drawings of the parent patent application but is different from that disclosed in the approved claims of the parent patent application. For a divisional patent application, the examination proceeding shall start from the examination proceeding of its parent patent application before patent allowance (Paragraph 6).”
 
5.Patent Act Governing Handling of a Cancellation Action (Paragraph 3, Article 71)
 
According to the current Patent Act (Paragraph 3, Article 71), the fact and reasons for filing a cancellation action against an invention patent shall be governed by the Patent Act in effect at the time of allowing the invention patent under cancellation action. However, if the Patent Act provides otherwise for specific fact and reasons for cancellation actions, the said fact and reasons shall be governed by the Patent Act in effect at the time of filing the concerned cancellation action. In particular, if a post-allowance divisional filing leads to double patenting issues between the parent patent application and the divisional patent application, such ground for cancellation is in nature a substantive violation of the requirements for patentability, and it shall be governed by the Patent Act in effect at the time when the cancellation action is filed. Therefore, Paragraph 3, Article 71 of the amended Patent Act clearly states that if a cancellation action is filed on the ground that the patent is in violation of the front part of Paragraph 6, Article 34 (quoted below), the Patent Act which is effective at the time of filing the cancellation action shall govern the examination of this disputed issue in the cancellation action.
 
“Where a divisional patent filing made based on Item 2, Paragraph 2 is filed, the divisional filing shall cover an invention which is disclosed in the specification and/or drawings of the parent patent application but is different from that disclosed in the approved claims of the parent patent application. For a divisional patent application, the examination proceeding shall start from the examination proceeding of its parent patent application before patent allowance (Paragraph 6).”
 
B.  New Utility Model Patent Applications (Articles 107, 119 & 157-3)
 
1.Timing & Deadline for Filing (Articles 107 & 157-3)
 
According to the current Patent Act (Article 107), where a utility model patent application covers in substance two or more utility models, application(s) for divisional filing(s) can be made either upon request by the TIPO or initially by the patent applicant. Divisional filing must be made before receiving a decision for the parent patent application. Referring to the content of the amended Paragraph 2, Article 34 (the timing and deadline for a post-allowance divisional filing), after the amendment of Patent Act, a post-allowance divisional filing based on a utility model patent case shall be allowed with a deadline of 3 months from the date of receiving an allowance decision for the parent patent application. 
 
According to Article 157-3 of the Patent Act, for a utility model patent application allowed before 1 November 2019, if the deadline for filing a post-allowance divisional application under the amended Patent Act (Item 2, Paragraph 2, Article 107) has not expired at the time when the amended Patent Act takes effect (i.e., 1 November 2019), the applicant may proceed with a post-allowance divisional filing under the amended Patent Act.
 
2.Reason for Filing a Cancellation Action Against a Utility Model Patent (Paragraph 1, Article 119)
 
To cope with the amendment of Article 107 & Paragraph 6, Article 34 which also applies to utility model patents, Paragraph 1, Article 119 was amended to explicitly recognize the violation of the front part of Paragraph 6, Article 34 (as quoted above which applies to utility model patents) as one of the grounds for filing a cancellation action against a utility model patent:
 
“Where a divisional patent filing made based on Item 2, Paragraph 2 is filed, the divisional filing shall cover an invention which is disclosed in the specification and/or drawings of the parent patent application but is different from that disclosed in the approved claims of the parent patent application. For a divisional patent application, the examination proceeding shall start from the examination proceeding of its parent patent application before patent allowance (Paragraph 6).”
 
3.Patent Act Governing Handling of a Cancellation Action (Paragraph 3, Article 119)
 
If a post-allowance divisional filing violates the requirements set forth in the front part of Paragraph 6 of Article 34 (which also applies to utility model patents according to Article 120), since such violation may lead to double patenting between the parent application and the divisional application, which is in nature a violation of the requirements for patentability, Paragraph 3, Article 119 has been amended to clearly state that if a cancellation action is filed on the ground that the patent is in violation of the front part of Paragraph 6, Article 34 (quoted below), the Patent Act which is effective at the time of filing the cancellation action shall govern the examination of this disputed issue in the cancellation action. 
 
“Where a divisional patent filing made based on Item 2, Paragraph 2 is filed, the divisional filing shall cover an invention which is disclosed in the specification and/or drawings of the parent patent application but is different from that disclosed in the approved claims of the parent patent application. For a divisional patent application, the examination proceeding shall start from the examination proceeding of its parent patent application before patent allowance (Paragraph 6).”
 
III.        Patent Term Extension (Article 57)
 
According to Article 52 of the current Patent Act, the patent term of an invention patent starts from the patent publication date and expires upon the expiry of 20 years from its filing date. Also, as prescribed in the current Patent Act (Article 53), where the practice of an invention patent covering a pharmaceutical product, an agrichemical product, or a method for manufacturing the same needs a special permit from the Taiwan government pursuant to the relevant Taiwan laws, and where such special permit is obtained after the patent publication, the patent owner may apply for a one-time patent term extension only one of which is obtainable. Each special permit can be used to seek only one extension. The said patent term extension shall not exceed the total time period during which the patent cannot be practiced for the reason of obtaining the special permit from the relevant government agency. If the time period needed for obtaining the special permit exceeds 5 years, the maximum patent term extension shall be 5 years.
 
With respect to a granted patent term extension, Article 57 of the current Patent Act sets forth the below-listed grounds for filing a cancellation action against the patent term extension:
 
(1)   Where there is no need to obtain a special permit to practice the patent;
(2)   Where the patent owner or its licensee never received a special permit;
(3)   Where the extended time period exceeds the time period during which the patent cannot be practiced;
(4)   Where the applicant seeking the patent term extension is not the patent owner;
(5)    Where the special permit based on which a patent term extension is granted is not the first special permit or the said special permit has been extended;
(6)    Where a patent term extension is filed based on the time period for conducting testing abroad recognized by the Taiwan government when issuing the special permit, the patent term extension period granted by the TIPO exceeds the patent term extension by a foreign patent office; and
(7)    Where the product of a patent, for which a patent term extension is applied for, is used for animals.
 
The purpose for providing patent term extension is to compensate the time period during which a patent owner cannot practice its patent due to the need for obtaining a regulatory permit to practice the same. According to the Regulations Governing Patent Term Extension Matters, the calculation of the time period for conducting foreign clinical trials that is required for obtaining a regulatory permit issued by Taiwan government shall be based on the time period granted by the in-charge government agency for the regulatory permit.  The fact whether a patent term extension has been allowed in a foreign country is irrelevant to the calculation of the above-mentioned time period. It is not necessary to look into the specific term for patent term extension granted in a foreign country. Therefore, Item (6) above as grounds for filing a cancellation action against a patent term extension grant has been deleted through the amendment of Patent Act.
 
As stated in the legislative explanation of the amendment Patent Act, if any third party considers that the time period for conducting testing abroad as considered in granting a patent term extension is erroneously calculated, leading to an erroneous grant of patent term extension, the party may file a cancellation action against the concerned patent term extension grant based on a violation stated in Item 3, Paragraph 1, Article 57 (that is, the extended time period exceeds the time period during which the patent cannot be practiced). Therefore, deletion of the grounds listed in Item (6) above would not affect the right and interests of third parties.
 
IV.          Cancellation Actions
 
A. Time Period for Submitting Cancellation Argument(s) and Evidence (Article 73)
 
According to the current Patent Act (Article 73), a cancellation petitioner shall submit to the TIPO a written application, listing the declaration for cancellation action and reason(s) and submit the supporting evidence. The cancellation petitioner may submit supplementary reason(s) and evidence within one month from the date of filing the cancellation action. Any reason or evidence to be submitted before a decision is issued for the cancellation action shall be taken into consideration. To avoid delays in handling and deciding a cancellation action due to repeated filing of supplementary reasons and evidence by the concerned parties, an amendment to the Patent Act states: A cancellation petitioner must submit supplementary reasons and evidence within 3 months from the date of filing the cancellation action. Any supplementary reason or evidence submitted beyond the 3-month deadline shall not be considered. 
 
B.  Time Period for Patentees' Filing of Post-Grant Amendments, Responses or Statements (Article 74)
 
According to Item 2, Paragraph 1, Article 74 of the Patent Act, where the TIPO receives a cancellation action, it shall serve the patent owner with the same. The patent owner shall file a defense within one month from date of receiving service. Unless the patent owner has explained the reason and received an extension for filing its defense, the TIPO shall review the cancellation case based on documents on file. Where there may cause a delay to the examination of a cancellation case due to the late submission of reason(s) and/or evidence by a cancellation petitioner or where the fact and evidence is found clear, the TIPO may proceed with the examination directly. The above-mentioned provisions remain the same after the amendment of Patent Act. However, to well manage the examination of a cancellation case to avoid unnecessary delay in concluding the case which may affect the rights and interests of both parties, Paragraphs 3-5, Article 74 were amended as follows:
 
(1)  If a cancellation action is filed, the patentee can apply for amendment(s) only at the below-listed timing: (a) the time period set by the TIPO for filing a defense brief, (b) the time period for filing a supplementary defense brief or (3) the time period for filing a response/statement to a TIPO's notification. The above shall not apply if the concerned patent is involved in a patent litigation (Paragraph 3).
 
(2)     As the TIPO deem necessary, the TIPO may notify a cancellation petitioner to express opinion or notify the patentee to file a supplementary defense or file a response/statement with the TIPO. The cancellation petitioner /or the patentee has to act as required by the TIPO within one month. Unless an extension is granted beforehand, documents under late submission shall not be taken into consideration (Paragraph 4).
 
(3)Where the filing of response/statement or supplementary defense as stated in Paragraph 4 may cause delay of the examination or the fact and evidence is found clear and concrete, the TIPO may continue its examination without requesting the filing of a supplementary defense or response/statement (Paragraph 5).
 
C.      Post-Grant Patent Amendment (Paragraph 2, Article 77)
 
According to the current Patent Act (Paragraph 1, Article 77), where there is a post-grant amendment request filed during the examination procedure of a cancellation case, the examination of the amendment request and the examination of the cancellation case as well as their decisions should be consolidated. Where the TIPO considers that an amendment request is acceptable, it shall serve a copy of the amended specification, claims or drawings on the cancellation petitioner.  Paragraph 2, Article 77 further stipulates that where there are two or more requests for post-grant amendment filed during the proceedings of same cancellation action, the earlier-filed request(s) for post-grant amendment shall be deemed to have been withdrawn.
 
If an amendment request filed by the patentee only relates to “deleting claim(s)”, the amendment, once approved and published, shall retroactively become effective from the filing date of the concerned patent. If such amendment deleting claim(s) leads to "absence of subject matter(s) under cancellation", which will not affect the rights and interests of the cancellation petitioner and which can also facilitate the examination of the cancellation case, the TIPO may proceed with examination directly without requesting opinions from the cancellation petitioner. Therefore, Paragraph 2, Article 77 has been amended as follows:
 
“Where an amendment stated in the preceding Paragraph is considered acceptable by the TIPO after examination, the TIPO shall serve a copy of the amended document on the cancellation petitioner. However, if the amendment only relates to deleting claim(s), the above service requirement shall not apply.” 
 
V.       Timing for Applying for Post-Grant Amendment to Utility Model Patents and the Examination of the Amendments (Article 118)
 
In Taiwan, utility model patent applications are only subject to formality examination before they are decided. Where a utility model patent application complies with the formality requirements, it shall be allowed. According to Article 118 of the current Patent Act, except for the situations prescribed in Paragraph 1, Article 77 applying mutatis mutandis to utility model patents under Article 120 (such as, the examination of a cancellation case as well as the examination of a post-grant amendment should be consolidated, the TIPO shall serve a copy of the amendment on the cancellation petitioner when the amendment is considered allowable), a post-grant amendment of a utility model patent should be subject to formality examination and a decision shall be thus made and served on the applicant filing the amendment.
 
To ensure the stability of the contents of a utility model patent and to avoid disputes caused by the change of the said contents,  if there already exists dispute(s) with respect to the substantive issues of a new utility model patent (such as, a cancellation action against the utility model patent is filed, a utility model patent right evaluation report is applied, a patent litigation involving the utility model patent is pending before the court) , the substantive examination of an amendment of utility model patent thus becomes necessary. With regard to request for a post-grant amendment, Paragraph 3, Article 74 of the amended Patent Act has provided limitation as to the “timing” for making amendments. The amendment of the Patent Act brought to change of Article 118 is as follows:
 
“In addition to the timing requirements prescribed in Paragraph 3, Article 74 which, as stated in Article 120, applies mutatis mutandis to utility model patents, a post-grant amendment to a utility model patent can be filed only under one of the following timing:
 
(1)        An application for a Utility Model Patent Evaluation Report of the utility model is filed and is pending before the TIPO; and
(2)        A litigation involving the utility model patent is pending before the court. ”
 
VI.         Design Patent Term Extended to 15 Years (Articles 135 & 157-4)
 
According to Article 135 of the current Patent Act, the patent term of a design patent starts from the patent publication date and expires 12 years from the filing date. The patent term of a derivative design patent shall expire on the expiration date of its parent design patent. In response to comments provided by the general public and considering that the design patent term in most foreign countries exceeds 15 years (such as 15 years in US, 20 years in Japan and Korea, and 25 years in EP), Article 135 was amended to extend the patent term of a design patent from the original 12 years to 15 years. 
 
According to Paragraph 4, Article 157 of the amended Patent Act, where an earlier granted design patent remains valid at the time when the amended Patent Act takes effect (i.e., 1 November 2019), its patent term shall be extended to 15 years. Where a design patent has become extinguished prior to 1 November 2019 due to a violation of Paragraph 3, Article 70 (which, as stated in Article 142, applies to design patents) (i.e., an annuity is not timely paid) and a reinstatement procedure is filed on or after 1 November 2019 (i.e., the failure of not paying annuity timely is not intentional), the patent term of such design patent shall be governed by the amended Patent Act after it is reinstated.
 
VII.      Possession of Patent Files (Article 143)
 
According to Article 143 of the current Patent Act, the TIPO shall possess the filing documents, specification, claims, abstract, and drawings of a patent application permanently. As to other documents, the TIPO shall possess the same for a maximum of 30 years. The above-mentioned patent files can be recorded on microfilm, disc, magnetic disc, CD-ROM, or other media considered as same as paper files upon verification by the TIPO, after which paper files can be destroyed. Reproduced copies of the file storage records are presumed to be true upon verification by the TIPO. The above-mentioned records of storing patent files shall be governed by regulations announced by the TIPO.
 
Considering the huge number of patent files and insufficient space for keeping such patent files, Article 143 was amended to limit the permanent possessed patent files to those considered by the TIPO as “files with preservation values.”  The amendments are as follows:
 
(1)        For filing documents, specification, claims, abstract, drawings of a patent application, which is considered with value for preservation by the TIPO, such files will be possessed permanently.
 
(2)       For allowed invention patent cases, their files shall be possessed for 30 years. The files of other invention patent cases shall be possessed for 20 years.
 
(3)       For allowed utility model patent cases, their files shall be possessed for 15 years. The files of other utility model patent cases shall be possessed for 10 years.
 
(4)       For allowed design patent cases, their files shall be possessed for 20 years. The files of other design patent cases shall be possessed for 15 years.
 
VIII.   Transitional Provisions (Article 157-2, 157-3 & 157-4)
 
As to the application of the current Patent Act and the amended Patent Act, the following transitional provisions are added into the amended Patent Act:
 
(1)        Article 157-2
 
For patent applications that are not decided by 1 November 2019, unless the Patent Act provides for otherwise, the amended Patent act shall govern. For post-grant amendment applications and cancellation cases that are not decided by 1 November 2019, the amended Patent Act shall govern.
 
(2)        Article 157-3
 
For patent applications that have been allowed by 1 November 2019, for which the deadlines for filing post-allowance divisional applications under the amended Patent Act (Item 2, Paragraph 2, Article 34 for invention patent applications and Item 2, Paragraph 2, Article 107 for utility model patent applications) have not expired, the amended Patent Act shall govern.
 
(3)        Article 157-4
 
Where an earlier granted design patent remains valid at the time when the amended Patent Act takes effect (i.e., 1 November 2019), its patent term shall be governed by the amended Patent Act. Where a design patent has become extinguished prior to 1 November 2019 due to a violation of Item 3, Paragraph 1, Article 70 which, as stated in Paragraph 1, Article 142 applies to design patents (i.e., an annuity is not timely paid) and a reinstatement procedure is filed on or after 1 November 2019 (i.e., the failure of not paying annuity timely is not intentional), the patent term of such design patent shall be governed by the amended Patent Act after it is reinstated.   
 
To guide the implementation of the amended Patent Act, the TIPO has also amended the relevant patent examination guidelines. Lee and Li will further share this important information with our clients. If you have any questions regarding the amended Patent act, please feel free to contact us.


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