MORE CHANGES IN PATENT PRACTICES

01/01/2002

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As the ROC joined the WTO on 1 January 2002, the Patent Law and its practice will encounter changes. The key aspects are as follows:

1997 Patent Law Amendment to take effect

The 1997 amended provisions took effect on 1 January 2002. The major provisions are sum-marized below:

The following pre-requisites for seeking patent protection on microorganism per se inventions by a foreign applicant were removed:

1.that the ROC joined the WTO and the WTO TRIPs took effect in the ROC for one full year; or

2.that the home country of the foreign ap-plicant signed a reciprocal treaty or agreement with the ROC, providing the same protection to ROC nationals

The pre-requisite for seeking patent term pro-tection on pharmaceutical or agrichemi-cal-related patents by a foreign applicant that the home country of the foreign applicant must signed a reciprocal treaty or agreement with the ROC, providing the same protection to ROC nationals, was removed.

The following pre-requisites for asserting im-portation rights by foreigners were removed:

1.that the ROC joined the WTO and if the WTO TRIPs took effect in the ROC for one full year; or
2.that the home country of the foreign ap-plicant signed a reciprocal treaty or agreement with the ROC, providing the same protection to ROC nationals

A new provision was added to the effect that in case of a revocation of a invention or new utility patent right as a result of a cancellation action, a bona fide licensee may continue to practice the revoked patent provided that he should pay a reasonable compensation to the new patent owner.

The legal grounds for compulsory licensing of patents covering semiconductor chip tech-nology were narrowed to cover only non-profit use to promote public welfare, or in cases of unfair competition committed by a patent owner.

The provision authorizing revocation of com-pulsory license was modified to cover a vio-lation of any of the statutory grounds for granting a compulsory license enumerated in Article 78 of the Patent Law. Previously, grounds for such revocation had been limited to violation of the non-profit use to promote welfare and unfair competition committed by the patent owner.

The provision for compulsory licensing be-tween owners of dominating patents and dominated patents was modified to the effect that the owner of a dominated patent (a rein-vention patent or a manufacturing process patent) may apply for a compulsory licensing only if the technology covered in the domi-nated patent involves an important technical improvement with considerable economic significance, as compared with the one cov-ered in the dominating patent.

The patent marking requirement was modified to the effect that although as a principle if the required patent marking is not made, the right of claiming damages should be barred, such right remains intact if the infringer was aware of, or has been proved to have means of knowing, of the concerned patent.

A provision was added to allow an injured party (a patentee or an exclusive licensee) to demand destruction or other necessary dispo-sition of the infringing products or the raw materials and/or articles used in infringing the patent.

The provision regarding burden of proof in process patent infringement cases was modi-fied. Previously, if the article produced by the patented manufacturing process has never been in existence before the filing of the patent, an identical article produced by another per-son should be presumed to have been manu-factured by the same process; provided that this presumption may be defeated by rebuttal evidence. Now the rebuttal evidence is ad-mitted only when an alleged infringer has proven that the process used to manufacture the identical article differs from the patented process. Furthermore, the legal rights and in-terests pertaining to manufacturing and trade secrets of all evidence produced by the alleged infringer, and not only the rebuttal evidence submitted, should also be fully protected.

The duration of a new design patent is ex-tended to 12 years from its filing date.

The scope of new design patent is expanded to cover articles of which the design is identical with or similar to the patented new design.

2001 Patent Law amendment to take effect

Articles 24 and 118-1 as amended in 2001 also took effect on 1 January 2002. Their major contents are summarized as follows:

The reciprocity requirement for claiming pat-ent priority under Article 24 was relaxed to the extent that even if a foreign applicant whose home country has not yet formed reciprocity with the ROC for patent priority claim, a pri-ority claim made by such applicant should still be allowed if the applicant has a residence or place of business in one of the reciprocal countries.

Article 181-1 was added to the effect that in case of a revocation of a invention or new utility patent right as a result of a cancellation action, a bona fide licensee may continue to practice the revoked patent provided that he pays reasonable compensation to the new patent owner.

Changes in IPO Patent Practice

The ROC is not a member to Paris Convention, and convention priority claim is not allowed. Currently, the international patent priority claim practice is implemented by means of coun-try-by-country reciprocity between the ROC and a specific foreign country. After the ROC joined the WTO, in compliance with the principle of national treatment principle and the most favored nation treatment principle, the IPO has to change its practice to extend reciprocity to all WTO member countries.

The IPO is currently clarifying the following issues in connection with their examination guidelines:

Can a patent applicant from a WTO member country claim patent priority retroactively for his ROC patent applications filed prior to 1 January 2002, or claim priority based on cor-responding basic application filed prior to 1 January 2002?

In the case of a priority claim made by an ap-plicant from a WTO member country, is it allowed for such applicant to claim priority based on an EP or PCT application designat-ing any of the reciprocity country?

According to Article 21 of the 1997 amended Patent Law, a foreigner may seek patent pro-tection on a microorganism per se invention. Does the above article apply to patent appli-cations that were filed prior to 1 January 2002?

We will keep our clients advised of further de-velopments.