Newsletter
AMENDMENT OF PATENT LAW
The Patent Law currently in effect came into force on 21 January 1994. In order to implement the Legislative Yuan's resolution calling for the introduction of domestic priority and laying open practice, to comply with the Trust Law, and to improve the current practice, the Intellectual Property Office (IPO) proposed certain amend-ments to the Patent Law, which were presented by the Executive Yuan to the Legislative Yuan on 27 December 1999. The main points are as follows:
Currently, where a patent application is pre-ceded by an earlier filed and allowed patent application in respect of an identical invention or utility model or an identical or similar new design, the invention, utility model or new design disclosed in the subsequent application loses its novelty and is unpatentable. To adapt to the "first to file" principle and the lay-ing-open practice, additional articles are pro-posed to state that an invention application (or a new utility model application) shall not be allowed if its content is identical to that dis-closed in the specification or drawings filed for another patent application filed earlier and is laid open or published subsequent to the filing of the later-filed application, except where the applicant is the same in both cases. The same principles apply to new design patent applications.
Currently, the filing date of an application is the date on which the application fee, appli-cation form, specification and necessary drawings, Oath and Assignment are all sub-mitted to the IPO. To protect the interests of applicants, the revised articles provide that the Oath and Assignment may be submitted sub-sequently, and are not required to obtain a filing date.
Currently, a foreign applicant may claim pri-ority only if both of the following reciprocity requirements are met:
1.a corresponding basic application for an identical invention, utility model or new design was first filed in legally valid form in a country with which the ROC has es-tablished reciprocity for patent priority claims; and
2.the applicant is a national from a country which has established reciprocity with the ROC for patent priority claims.
3.To be in line with international standards, the reciprocity set forth in Item 2 above will be abolished. The date when this amendment will take effect should be de-termined by the Executive Yuan.
International priority claim practice was first introduced into the Patent Law through the January 1994 amendments. The amendments now proposed seeks to bring in the domestic priority claim practice. This will enable an applicant, who files a further application based on an invention application or a new utility model application earlier filed by him in the ROC, to claim priority in respect of the in-vention or creation disclosed in the specifica-tion or drawings of the earlier-filed application. However, domestic priority claim cannot be made under any one of the following circum-stances:
1.where 12 months have elapsed since the filing date of the prior application;
2.where international or domestic priority has already been claimed under the Patent Law in respect of the invention or creation disclosed in the prior application;
3.where the prior application is a divisional application filed under Article 32, Para-graph 1, of the Patent Law, or a converted application filed under Article 101 of the Patent Law; and
4.where the prior application has been withdrawn, abandoned, dismissed or de-cided
A prior application will be deemed as having been withdrawn after 15 months following its filing date so as to prevent duplicated lay-ing-open or examination.
Applicants will no longer be required to sub-mit deposit certificates when filing their patent applications involving microorganism-related inventions. Under the proposed amendment, unless the microorganisms involved can be easily obtained by persons skilled in the art, an applicant must deposit the microorganisms with a designated depository within the ROC before filing the application and specify in the application the name of depository, depository date and depository number. The applicant may submit deposit certificates, however, within three months from dates of filing the application. Otherwise, it will be deemed that no deposits were made yet.
The proposed amendment will address a situation in which the same applicant has filed two or more patent applications in respect of the same invention or creation (the current law only addresses a situation in which different applicants have filed two or more such appli-cations).
But patent-of-addition applications which, at the time when the amendments come into force, have been filed but not yet been ir-revocably decided, and the granted pat-ent-of-addition will not affected and will re-main valid.
To avoid duplication of research and devel-opment investment by enterprises, and dis-close technology to the public as early as possible in order to promote the advance of industrial technology, the laying-open practice for invention patent applications will be adopted. The main points are as follows:
1.If, after receiving and examining the filing documents for an invention patent appli-cation, the authority finds no procedural defect or grounds for non-publication, the application shall be laid open for public inspection within 18 months from the date of filing, except for that an application which has already been published shall not be laid open again. Where priority is claimed, the 18-month period shall be counted from the priority date, or in the case of multiple priority claims, from the earliest priority date.
2.The patent authority may lay open a patent application earlier than the 18-month time period at a request of the applicant.
3.An invention patent application will not be laid open under any one of the fol-lowing circumstances: where it is with-drawn within 15 months after filing; where it is related to confidential infor-mation pertaining to national defense or other national security matters; or where it is detrimental to public order or good morals.
4.Within 3 years from the filing of an in-vention patent application, any person may file a request with the patent author-ity for a substantive examination. Such request may not be withdrawn. Where no such request has been made within the statutory period, the application shall be deemed as having been withdrawn.
5.When an applicant of an invention appli-cation covering a microorganism per se invention or an invention utilizing a mi-croorganism files a request for substantive examination, he must submit a certificate of viability issued by the designated de-pository. If such request for the same ap-plication is filed by a person other than the patent applicant, the patent authority shall require the patent applicant to submit a certificate of viability within a specified period.
6.Where, after an invention patent applica-tion is laid open but before it is allowed and published, a person other than the applicant practices the invention for commercial purposes, the patent authority may, if so requested, expedite its substan-tive examination.
7.Where, subsequent to the laying-open of an invention patent application, the ap-plicant gives a written notice of the con-tent of his patent application to another person, and said person, after receiving such notice but before the application is allowed and published, continues to prac-tice the invention commercially, the ap-plicant may seek reasonable compensa-tion after his is finally granted. A patentee may also seek reasonable compensation from any person who, in the clear knowledge that an invention patent ap-plication has been laid-open, continues to practice the invention commercially dur-ing the period before the application is allowed and published. This right to seek compensation does not affect the exercise of any other rights. However, it lapses if not exercised within two years after the final granting of the patent.
8.Provisions prescribing the laying-open practice, requests for substantive exami-nation, and right to seek compensation, as stated in Items (a) through (g) above, shall apply to invention patent applications filed one year after the proposed amend-ments take effect.
1.Amendments to Invention Patent Appli-cations (Article 44-1):
In line with the introduction of the lay-ing-open practice, the patent authority may, ex officio, require an applicant to amend the specification or drawings within a specified period. An applicant may make amendments to the specifica-tion or drawings within 15 months from the date of filing an application (or, where priority is claimed under Article 24, from the priority date). Beyond this 15-month period, an applicant may only amend the specification or drawings as follows:
a.when requesting a substantive exami-nation;
b.where a person other than the applicant requests a substantive examination, within three months after being served with a notice of the substantive ex-amination;
c.Within the response period for a notice issued by the patent authority inform-ing its intended rejection of the appli-cation;
d.When applying for reexamination, or within the period for submitting a re-examination brief;
e.Within the opposition defense period; or
f.Within the period for filing a response against an ex-officio examination initi-ated by the patent authority.
2.Amendments to New Design Patent Ap-plications (Article 116):
Where an applicant or an opponent sub-mits models or samples, the patent au-thority may, as it deems it necessary, visit a specific premise or designate a location to conduct an inspection. Where an ap-plicant applies for amendments to the specification and drawings, such amend-ments shall not change the substantive nature of the application. Where amend-ments are made after a design application is allowed and published, they shall be limited to corrections of mistakes and/or unclear statements.
A trust arrangement cannot be asserted against any third party unless they are recorded with the patent authority. Where a patent is jointly owned, none of the co-owners may place his share in trust without the consent of all other co-owners.
Currently, only until an opposition action or a cancellation action against an invention, new utility model or new design patent has become "irrevocably" dismissed through the adminis-trative proceedings, can others be barred from filing a new cancellation action on the basis of the same facts and evidence. To prevent re-peated filing and duplication of examinations, protect the right of patentees to exercise their patent rights in a timely manner, and avoid legal proceedings, the word "irrevocably" will be deleted from the legal provision. Thus, where an opposition or cancellation action is dismissed by the IPO, there will be no need to wait for an irrevocably decision, and no per-son will be allowed to file another cancellation action based on the same facts and evidence.
To emphasize the special nature of a new de-sign patent, the definition of a new design will be changed to: "a creation made in the respect of the shape, pattern or color, or a combination thereof, of an article, which can be appraised through visual appeals". Patentability re-quirements for a new design are also to be amended as follows:
1.Industrial Applicability
In addition to other statutory requirements, a new design must meet the "industrial applicability" requirement so as to be patented.
2.Novelty
Under the amendments, as a general rule, where an identical or similar design has been published or been publicly used prior to an application, the novelty of such a design shall thus be destroyed. However, the above shall not apply where a new design has been published or publicly used for research or experimental purposes, and an application is filed within six months after such publication or public use. Similarly, a new design loses its novelty if it has been displayed at an exhibition prior to an application, except for a government sponsored or recognized exhibition, and an application is filed within six months after the exhibition date.
A failure to meet the patentability requirement set forth in Article 107 (novelty and creative-ness requirements) is proposed to be added as one of the grounds for filing an opposition action against an allowed new design applica-tion.
Rights in an associated new design patent are dependent on its parent patent, and as such, may not be asserted independently and cannot be asserted to extend to similar designs.
Current Article 131 of the Patent Law is often misinterpreted as meaning that an infringe-ment action is legally filed only if the ac-companying infringement assessment report is issued by a government-designated institution. To more effectively protect the legal rights and interests of patentees, the following changes are proposed:
1.When filing a complaint against offences under Articles 123 to 126 of the Patent Law, a patentee shall submit an infringe-ment assessment report or a comparative analysis report indicating the asserted in-fringement of patent rights, which is not limited to one issued by a govern-ment-designated institution. Without the above report, the complaint shall not be deemed legally filed.
2.To avoid confusions in practice, a new separate article is proposed to require. The Judicial Yuan and the Executive Yuan to coordinate together in designating spe-cialist institutions for providing in-fringement assessment opinion. A provi-sion is also proposed to expressly em-power the court or a public prosecutor to seek an assessment opinion from such an institution.
Under the current Article 131, a patentee filing a criminal complaint against offenses prescribed in articles 123 to 126 must also submit a copy of the cease and desist letter requiring the infringer to terminate the infringement, in addition to an in-fringement assessment report. To avoid alerting the alleged infringers and prevent their destruc-tion of evidence, this requirement will be abol-ished.
We will continue to closely follow developments in the amendments of the Patent Law, and will keep on readers informed.