RETROACTIVE EXTENSION OF PATENT TERM

01/01/2002

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The Patent Law was amended in 1997 and 2001. As the ROC becomes a member on 1 January 2002, certain invention patents and new design patents are now qualified for retroactive patent term extension. The details are as follows:

Historical Background

The 1997 amendment, among others, extends new design patent term from 10 years to 12 years to comply with the WTO TRIPs standards. This particular provision took effect once the WTO TRIPs became effective in the ROC. Subse-quently, the 2001 amendment was promulgated on 24 October 2001, with all amended provisions taking effect immediately, except for Article 24 (regarding a relaxation of the requirement for foreigners to make international priority claims) and Article 118-1 (concerning rights of collect-ing compensation by rightful new design patent owners). These two amended provisions also took effect when the WTO TRIPs became ef-fective in the ROC.

Retroactive Extension of Patent Term

Invention Patents

According to Article 50 of the 1994 amended Patent Law, the patent term of an invention patent should expire 20 years after the filing date. However, for invention patents approved and published before 23 January 1994, their patent terms should expire 15 years after the publication date, but not to exceed 18 years from the filing date (hereinafter referred to as "Shorter Term Invention Patents"). According to the 2001 amendment, an invention patent that is still valid when the WTO TRIPs became effective in the ROC, its patent term should be 20 years from the filing date. In other words, if any of the Shorter Term Invention Patents remains in effect on 1 January 2002, its patent term should be retroac-tively extended to 20 years from its filing date.

New Design Patents

According to Article 109 of the 1994 amended Patent Law, the patent term of a new design patent should expire ten years from the filing date. However, for new design patents approved and published before 23 January 1994, their patent terms should expire five years after the publication date, but not to exceed 6 years from the filing date (hereinafter referred to as "Shorter Term New Design Patents").

According to the 1997 amendment, the patent term of a new design patent should expire upon the expiration of 12 years from the filing date. According to the 2001 amendment, for a new design patent that is still valid when the WTO TRIPs became effective in the ROC, its patent term should be governed by the 1997 amendment thus it should expire in 12 years from the filing date.

In other words, if any of the Shorter Term New Design Patents remains effective on 1 January 2002, its patent term should be retroactively ex-tended to 12 years from its filing date.

Actions Needed to Get Retroactive Patent Term Extension

The owner of a patent qualified for retroactive patent term extension needs to pay annuities for the extended patent term, and submit to the IPO the original patent certificate previously issued to endorse the patent term extension

The IPO has made the following guidelines for handling annuity payments and extension en-dorsements:

The Regulations Governing Patent Fees have been recently amended, and the annuity fees are increased as of 1 January 2002. According to Paragraph 2, Article 85 of the Patent Law, a patentee may pay annuities in advance and, in the case of an increased annuity fees due to the amendment, it is not necessary for the patentee to pay the difference between the fees already paid in advance and the due amount under the amended regulations. However, the above does not apply to payments of annuities for the extended patent term. In other words, it is not possible for a patentee to pay annuities for the extended term of his patent before 31 De-cember 2001 to reduce costs.

The IPO should endorse the extended patent term in the submitted patent certificate and will not charge official fee for such endorse-ment.