Newsletter
Newly-Adjusted Draft Amendments to the Taiwan Patent Act (Second Draft)
On December 30, 2020, the Taiwan Intellectual Property Office (TIPO) published draft amendments to certain articles of the Taiwan Patent Act, introducing significant changes to the existing patent remedy system, the major ones of which are summarized below:
1. A Re-examination and Dispute Review Committee ("Review Committee") is to be established by the TIPO and the examination process is to be strengthened (Articles 66-1 to 66-7).
2. The re-examination system handled by the Review Committee is introduced into the patent application process, the original re-examination mechanism handled by an officer of the TIPO is abandoned, and appeal levels are simplified. (Articles 66-8 to 68-1).
3. A dispute review system is introduced into patent cancellation cases (Articles 71 to Article 82); disputes over patent ownership is no longer be matters for filing a cancellation action; parties involved should instead seek a civil solution (Articles 10, 59, 71, 119, and 141).
4. Any lawsuits concerning patent re-examination(s) and/or dispute(s) are handled as civil rather than administrative proceedings (Articles 91-1 to Article 91-10).
After deliberating upon and weighing comments received from others, the TIPO released the second draft amendments of certain articles of the Taiwan Patent Act on June 22, 2021, the major ones of which, diverging from those of the first draft, are summarized below:
1. Suspension of procedures for disputes over ownership of the right to apply for a patent and the patent right (Article 10, Paragraphs 2 to 4)
Where disputes may arise concerning ownership of the right to apply for a patent and the patent right, parties--having sought remedies through civil dispute resolutions, such as litigation, mediation or arbitration-- shall have a right to apply for suspension of examination, review, and/or other procedures involved with right changes in accordance with the second draft amendment. In principle, the period for the suspension of procedures by the TIPO shall be limited to one year.
2. Relaxation of timing for divisional applications (Article 34, Paragraphs 2)
Pursuant to the current Patent Act, a request for division shall be filed within any of the time periods of the right: before a reexamination decision on the original patent application is rendered, or within three months after the date when an approval decision for the original patent application or reexamination is served. The second draft amendments add that a request for division may be filed within any of the following time periods: within two months after the date when a rejection decision for the original patent application has been served; before a re-examination rejection decision on the original patent application has been rendered; or within three months after the date of an approval decision for the original patent application has been served, benefiting patent applicants’ strategic consideration of patent portfolio.
3. Addition of circumstances allowing provision of new reasons and evidence in patent dispute litigation (Article 91-7)
The second draft amendments explicitly specify that, for requests of cancellations under Article 71, Paragraph 1, Subparagraph 1 of the Patent Act, the reasons and evidence not provided by the cancellation requestor(s) and/or any intervener(s) in the review procedures of the TIPO shall not be provided in the patent dispute litigation except in the following circumstances: (1) the provision of evidence is prevented due to the TIPO’s contravention of laws or regulations; (2) the facts are obvious to the court, or are known to the court in the course of performing its function, or the court shall investigate the evidence ex officio. If either of the preceding two provisions is violated, any new reason or new evidence shall be denied by the court.
The second draft amendments aims to enhance the economic efficiency of litigation. Article 33 of the Taiwan Intellectual Property Case Adjudication Act allows a cancellation requester to provide new evidence submitted on the same grounds for revoking a patent during litigation proceedings, which may serve as a chance for the patentee to file a post-grant amendment as a defense in litigation. However, any such post-grant amendment still depends on the TIPO to determine whether the post-grant amendment can be approved. Therefore, neither the TIPO shall be allowed to examine any new evidence provided by the cancellation requester in the litigation when conducting cancellation proceedings, nor shall the patentee be able to take adequate defensive measures and/or file alternative post-grant amendments in response, resulting in delayed litigation and leaving the patentee’s procedural interests poorly protected.
Aiming to promptly and effectively resolve disputes over private rights, the second draft amendments primarily take the particularity of patent cancellation cases into consideration and embody the spirit of Article 447 of the Taiwan Code of Civil Procedure in the adoption of a strict continuance system for the proceedings in the second instance. Thus, the amendments explicitly specify restrictions on the reasons or evidence provided by any cancellation requestor(s) and/or intervener (s), since the remedial interests thereof involve two parties concerned, and are related to the distribution of litigation costs and burden of proof to be borne jointly by both parties. Consequently, the cancellation requestor(s) and/or the intervener(s) shall bear any disadvantages of their failure to provide relevant evidence in due time.
4. Explicit specification of the ways of adjudging litigation (Article 91-9)
Since dispute litigation is a new type of litigation in the proposed amendments to the Taiwan Patent Act, ways of adjudging such litigation cases are explicitly specified in order to clarify relevant practices in the future and to avoid subsequent disputes.
The court shall adjudicate litigation cases as prescribed in Article 91, Paragraph 6, Subparagraph 1, in the following manners: (1) where the plaintiff’s complaint is in contravention of laws, the court shall dismiss it by a ruling; (2) where the plaintiff’s complaint is meritless, the court shall dismiss it by a judgment; (3) where the plaintiff’s complaint is meritorious, the court shall revoke the review decision made by the TIPO and determine the extent of the protection conferred by the patent through a judgment; and (4) where the plaintiff’s complaint is meritorious but subject to a dismissal decision by the TIPO in accordance with Article 66-7, the court shall revoke the original decision and revert it to the TIPO for review.
The foregoing draft amendments are not yet finalized. Since the amendments proposed at this time will definitely have a far-reaching impact on the patent application and patent remedy system, patentees and relevant practitioners are advised to pay close attention to the changes of the Patent Act and relevant laws and regulations, so as to keep abreast of the new system, lest their rights and interests may be affected.