An amendment to the ROC (Taiwan) Patent Act announced by the President on 1 May 2019 will take effect on 1 November 2019, as declared by the Executive Yuan (Cabinet) on 31 July 2019.Under current practice, unless there is a cancellation action pending, post-grant amendment to a utility model patent is subject to formality examination only (in accordance with Formality Examination Guidelines for Post-Grant Amendment of Utility Model Patents). After the amended Patent Act takes effect, it will instead be subject to substantive examination (in accordance with Substantive Examination Guidelines for Post-Grant Amendment of Invention Patents), but can only be accepted for examination under the following conditions:
1. a cancellation action is pending and the patentee has been requested to submit a defense brief, supplementary defense brief or response (e.g., in response to an official notification rejecting a pending post-grant amendment);
2. a technical report for the utility model patent is underway;
3. there is pending litigation relating to the utility model patent.
Therefore, in the future, if the patentee would like to file a post-grant amendment voluntarily, it may be necessary to file a request for a technical report first.
We learned from contacting the Taiwan Intellectual Property Office (TIPO) that it will try to complete examination of all pending post-amendment cases before the amended Patent Act takes effect. Any cases that have not been examined by that time will be subject to substantive examination automatically.
The current standards for post-grant amendment under formality examination are stricter than those under substantive examination. Therefore, even though there will be tighter timing restrictions for effecting post-grant amendment under the amended Patent Act, the chance of post-grant amendment being granted will be greater.