Newly Passed Amendment to Taiwan’s Patent Law: Relaxation of D.A. Requirement, Longer Term of Design Protection, Revised Invalidation Procedure

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The amendment bill to Taiwan’s Patent Act approved by the Executive Yuan in late 2018 was passed on April 16, 2019, by the Legislative Yuan. It extends the term of protection for design patents from 12 to 15 years. The bill, originally proposed by the Intellectual Property Office (TIPO) early last year, aims to create a more robust patent protection system, enhance the case review efficiency of patent remedies and promote industrial innovation.  

A total of 17 articles were included in the amendments. Seven major changes introduced are summarized below:

1. Restrictions relaxed on divisional patent applications of intentions and utility models for longer deadline and boarder applicable scope(Article 34, 46, 71, 107, 119 and 120)

According to the current Patent Act, divisional patent applications, only allowable for eligible inventions, shall be filed “within 30 days after the date on which an approval decision for the original patent application is served.” The draft amendments relax the time limit from 30 days to three months upon receiving the approval or reexamination decision for the original application. The new stipulation applies to patent applications for not only inventions, but also utility models. 

The related provision in Article 29 of the Enforcement Rules of the Patent Act which prescribes “ a request for division ….. is filed based on the invention(s) disclosed in the description or the drawing(s), but not those claims that have been approved in the original patent application…..” will be added to the Patent Act. Any causes in violation of said provision shall be regarded as the grounds for unpatentability and invalidation. 

2.Review-efficiency improvement of invalidation proceedings(Article 73, 74 and 77)

In order to avoid undue delay in invalidation proceedings, the amendments impose restrictions on invalidation actions that the grounds and evidence for invalidation shall be submitted within three (3) months, i.e. relaxed from one (1) month, after the date of filing the said action. Any submission after the required period shall not be examined. There is also new restrictions on post-grant amendment during the invalidation action in the draft amendments. 

3. Amended Stipulation for filing post-grant amendment of utility model patents (Article 118)

The post-grant amendment of utility model patent shall be rendered after substantive examination, instead of the formality examination stipulated currently. It can be filed only when said utility model patent is under invalidation proceedings, under litigation, or after its request for a technical evaluation report being accepted.

4. The term of design patents extended to 15 years from the filing date (Article 135)

The protection term of design patents is extended from currently twelve (12) years to fifteenth (15) years, to be exact, from the filing date of the application in response to the industrial propositions on the issue and following international practices. 

5.Controlled preservation of patent-related records(Article 143)

Due to insufficient storage space and following international practices, only patent files, such as application documents, description, claim(s), abstract, drawing(s), with confirmed enduring value shall be preserved permanently. Other patent-related documents shall be kept for a period of no more than thirty (30) years in this amendment draft. 

More specifically, patent-related documents shall be retained for twenty (20) years for inventions, ten (10) years for utility models and fifteen (15) years for designs, unless otherwise approved. As for patents reviewed and approved by the authority purposely, the related documents shall be retained for thirty (30) year for invention, fifteen (15) years for utility models and twenty (20) years for designs.   

6. Amendments to support the rule of law development (Article 29 and 57)

Applicants claiming priority, in accordance with Article 28, shall submit a certified copy of the first patent application, which indicating when and where it’s filed, within sixteen (16) months after the earliest priority date. 

Currently, Article 29 provides that applicants, who unintentionally fail to claim priority at the time of filing, may apply for reinstatement of priority claim within the same period. The draft amendment further clarifies that the priority claim shall be deemed not to have been made if the applicant fails to either apply the reinstatement or submit the required documentation within the 16-month time limit. 

In addition, Subparagraph 6, Paragraph 1, Article 57 of the Act is deleted from the listed invalidation grounds of patent term extension. Because the periods of time allowable for patent term extension include the period of domestic and/or foreign clinical trials conducted to obtain a pharmaceutical or agrichemical approval from the central competent authority in charge (Ministry of Health and Welfare or Council of Agriculture, Executive Yuan) according to Subparagraph 1, Paragraph 1, Article 4 and Subparagraph 1, Paragraph 1, Article 6 of the Regulations for Ratifying Extension of Patent Term. It is not relevant whether or how long any foreign patent authority has approved a patent term extension to the pharmaceutical or agrichemical. 

7. Transitional arrangements(Article 157-2, 157-3 and 157-4 )

At the time the amended Patent Act comes into force, pending application for design patents, post-grant amendment of utility model and invalidation proceedings, as well as divisional applications for eligible inventions and utility models, shall apply the newly amended Act. The amendments shall also apply to design patents in effect and extinguished for failure to pay annuities in time. 

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