Newsletter
NEW PATENT LAW AMEND-MENT TOOK EFFECT ON 26 OCTOBER 2001
The current Patent Law was amended on 21 January 1994 and took effect on 23 January 1994. To comply with the World Trade Organization (WTO) TRIPs standards, the Legislative Yuan (LY) amended the Patent Law in 1997 (such as deleting the pre-requisites for foreigners to seek patent protection on microorganism per se in-ventions or to apply for extension of patent term for pharmaceutical-related or agrochemi-cal-related patents or to assert importation right, extending new design patent term to 12 years, amending provisions concerning patent marking requirements, amending provisions concerning compulsory patent licensing practices, etc.); the amended provisions will take effect when the ROC is admitted to the WTO.
Subsequent to the 1997 amendment, the LY passed a further amendment to the Patent Law on 4 October 2001. All the 2001 amended provi-sions (except for Articles 24 and 181-1) took effect on 26 October 2001. The major content of the 2001 amendment is as follows:
An invention application (or a new utility model application) is not allowed for patent protection if its content is identical to that disclosed in the specification or drawings of another patent application filed earlier and is laid open or published subsequent to the filing of the later-filed application. The above does not apply where the applicant is the same for both applications. The same rule applies to new design patent applications.
When filing a patent application, an Oath and Assignment can be submitted later, and are not required to obtain a filing date.
1.Relaxing reciprocity requirements for claiming priority
Currently, a foreign applicant may claim priority only if both of the following re-ciprocity requirements are met:a.a corresponding basic application for an identical invention, utility model or new design was first and legally filed in a country that has patent priority claim reciprocity with the ROC; and
b.the applicant is a national from a country that has reciprocity with the ROC for patent priority claims.
To be in line with international standards, the reciprocity set forth in Item (b) above is relaxed to the effect that the applicant may claim priority in the ROC if he has a domicile or business place in one of the countries with reciprocity with the ROC. This amendment will take effect on a date to be determined by the Executive Yuan.
2.International priority claim
To file a patent application with an inter-national priority claim, the applicant must, when filing the application, state the serial number, the filing date and the receiving country of the corresponding basic appli-cation. If the applicant is not aware of the serial number of the corresponding basic application, he may disclose in the appli-cation the fact and reasons, and submit document evidencing the identity of the corresponding basic application within three months from the day following the date of filing the ROC patent application.Domestic priority claim practice
An applicant filing a further application based on an invention application or a new utility model application earlier filed by him in the ROC can claim domestic priority with respect to the invention or creation disclosed in the specification or drawings of the earlier-filed application. A domestic priority claim must be made on the date of filing the ROC patent application, and the applicant must disclose in the application the serial number and filing date of the earlier filed application. The pri-ority date thus claimed should not be prior to the date on which the 2001 amended Patent Law took effect.
Domestic priority claim cannot be made under any of the following circumstances:1.where 12 months have elapsed from the day following the filing date of the earlier filed application;
2.where international or domestic priority claim has already been made under the Patent Law with respect to the invention or creation disclosed in the earlier filed ap-plication;
3.where the earlier filed application is a di-visional application filed under Article 32, Paragraph 1, of the Patent Law, or a con-verted application filed under Article 101 of the Patent Law; and
4.where the earlier filed application has been irrevocably decided.Microorganism deposit & submission of de-posit certificates
An applicant of a microorganism-related pat-ent must submit the microorganism deposit certificate within 3 months from the day fol-lowing the date of filing the patent application. Otherwise, the deposit should be deemed not being made.
Furthermore, if prior to a patent application, the microorganism has been duly deposited, and the applicant discloses this in his patent application and submits the deposit certificate issued by the local depository and the docu-ment issued by the foreign depository within 3 months from the day following the date of filing the ROC patent application, the re-quirement that he should deposit the micro-organism in a local depository prior to appli-cation will not apply."First to file" and "one invention per applica-tion" principles to be enforced
Where two or more patent applications in re-spect of the same invention or creation are filed, the earlier/earliest patent application will be given priority. The above applies where an invention patent application and a new utility model application are filed for the same in-vention or creation; it, however, does not ap-ply where the priority date claimed for the later application is earlier than the filing date of the earlier/earliest application.Patents-of-addition practice is abolished
However, according to Article 136-1 of the draft Patent Law, patent-of-addition applica-tions that, at the time when the amendment took effect, have been filed but not yet been irrevocably decided, and the granted pat-ent-of-addition cases which are still valid at the same time, should be dealt with by the Patent Law prior to the 2001 amendment.Laying open practice for invention patent ap-plications
The 2001 amendment adopts "laying-open practice" for invention patent applications. If the patent authority finds no procedural defect or grounds for non-publication, a patent ap-plication will be laid open for public access within 18 months from the day following the date of patent filing. Where priority is claimed, the 18-month period will be counted from the day following the priority date, and in the case of multiple priority claims, from the day fol-lowing the earliest priority date.
An invention patent application should not be laid open under any of the following circum-stances: (1) where it is withdrawn within 15 months from the day following the filing date; (2) where it is related to confidential informa-tion pertaining to national defense or other national security matters; and (3) where it is detrimental to public order or good morals.
In addition, within three years from the day following the patent filing date, any person may file a request with the patent authority for a substantive examination. Such request may not be withdrawn. For a divisional application or a converted application for which the above 3-year period has expired, a request for sub-stantive examination can be filed within 30 days from the day following the date of divi-sion or date of conversion. In the absence of such request, the application should be deemed withdrawn. For a microorgan-ism-related application, the applicant, when filing a request for substantive examination, must submit the concerned certificate of vi-ability. If such request is filed by a third party, the patent authorities should notify the appli-cant to submit the certificate within a specified time period.
After a patent application is laid open but be-fore it is allowed and published, if a person other than the applicant practices the invention for commercial purposes, the patent authority may, upon application, expedite its substan-tive examination. If the applicant serves a written notice of the content of his patent ap-plication to such person, and said person con-tinues to practice the invention commercially, the applicant may seek reasonable compensa-tion after his application is irrevocably granted. A patentee may also seek reasonable com-pensation from any person who has the knowledge of the laying open of an invention patent application and continues to practice the invention commercially during the period before the application is allowed and pub-lished. The right to seek compensation as stated above does not affect the exercise of other rights. However, the right is barred if not exercised within two years from the day following the date of patent grant.New provisions governing amendments and supplements for patent applications 1.Amendments and supplements to inven-tion patent applications
The patent authority may, ex officio, re-quire an applicant to amend or supplement the specification or drawings within a specified period. An applicant may make amendments or supplements to the speci-fication or drawings within 15 months from the day following the patent filing date (or, where an international priority is claimed, from the day following the pri-ority date). Beyond the 15-month period, an applicant may only make an amend-ment or a supplement at any of the fol-lowing times: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; and
f.within the period for filing a response against an ex-officio examination initi-ated by the patent authority.
2.Amendments and supplements to new de-sign patent applications
Where an applicant or an opposition peti-tioner submits models or samples, the patent authority may, as it deems neces-sary, conduct site inspections. Where an applicant applies for amendments or sup-plements to the specification and drawings, such amendments or supplements should not change the substantive content of the patent application. Where amendments or supplements are made after a design ap-plication is allowed and published, they can only correct erroneous disclosure and/or clarify unclear statements.
However, trust arrangements may not be as-serted against any third party unless recorded with the patent authority. In the case of a jointly owned patent, none of the co-owners may create trust based on the patent without the consent of all other co-owners.
Previously, only until an opposition action or a cancellation action against a patent has be-come "irrevocably" dismissed through ad-ministrative appeal proceedings, could others be barred from filing a new cancellation action based on the same facts and evidence. The word "irrevocably" is now deleted. 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 one can file another cancellation action based on the same facts and evidence.
A new design is newly defined as: "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 ap-peals." Patentable requirements for obtaining a new design patent are amended to include: (1) industrial applicability, (2) novelty, and (3) creativeness.
Where a new design has been published or publicly used prior to patent application, its novelty should have been ruined. The above, however, does not apply if the publication or public use is made for research or experi-mental purposes and the ROC design patent application is filed within six months from the day of publication or public use. A six-month grace period is allowed if the new design has been displayed at a trade show recognized or sponsored by the ROC government.
According to Article 50 of the Patent Law, the patent term of an invention patent expires 20 years from the filing date. In addition, for invention patents approved and published before 23 January 1994, their terms expire upon the expiration of 15 years from the pub-lication date, but not to exceed 18 years from the filing date. To adapt to the standards set forth in Articles 33 and 70(2) of the TRIPs, the 2001 amendment provides that for an inven-tion patent that is still valid at the time when the WTO TRIPs take effect in the ROC, its patent term should be governed by provisions after amendments (i.e., 20 years from the fil-ing date).
According to Article 109 of the Patent Law, the patent term of a new design patent expires 10 years from the filing date. In addition, for new design patents approved and published before 23 January 1994, their patent terms expire upon the expiration of 5 years from the publication date, but not to exceed 6 years from the filing date. According to the 1997 Patent Law amendment, the patent term of a new design patent expires upon the expiration of 12 years from the filing date. The 1997 amendment will take effect after the ROC joins the WTO. To adapt to the standards set forth in Articles 33 and 70(2) of the TRIPs, the following has been added into the Patent Law: "For a new design patent that is still valid at the time when the WTO TRIPs take effect in the ROC, its patent terms shall be governed by the 1997 Patent Law amendments (i.e., 12 years from the filing date)."
However, the complainant is still required to submit an "analysis report regarding the al-leged patent infringement."
The old Article 131, Paragraph 4, "The Judi-cial Yuan and the Executive Yuan shall coor-dinate together in designating specialist insti-tutions for providing infringement assessment opinion," was moved to the new Article 131-1. Article 131-1 also prescribes that "the court or a public prosecutor may seek assessment opinion from such institutions."
However, criminal punishments for infringing new utility model patents and new designs remain unchanged.
The 2001 amendment requires the law en-forcement officers to pay attention to the personal reputation and property rights of the defendant or suspected, and to conduct the proceedings in proper manners based on the principle of proportionality.
As the 2001 amendment involves changes of certain important patent practices, Lee and Li will closely monitor its implementation and keep our readers informed.