Newsletter
PATENT LAW AMENDMENTS PROMULGATED
In response to Taiwan's industrial develop-ment, international legislative trends, and the need to improve the quality of patent ex-amination, on 3 January 2003 the Legislative Yuan enacted amendments to the Patent Law, which were promulgated by the President on 6 February 2003. The new Article 11 took effect immediately, but the remaining amendments will not come into force until a later date to be determined by the Executive Yuan.
The amendments entail changes to various aspects of patent application procedures and associated practice. The Intellectual Prop-erty Office (IPO), Ministry of Economic Affairs will have to devise associated meas-ures, and the amended articles (except for Article 11) are not expected to come into effect for another year (i.e. in 2004). The main points of the amendments are as fol-lows:
According to Article 174-1 of the Law of Administrative Procedures (LAP), a regula-tion which affects the rights and obligations of the people but lacks proper statutory authori-zation should cease to have effect on 31 De-cember 2002. The Ministry of Justice stated in its letter to the IPO dated 28 July 2002 that by operation of Article 174-1 of the LAP, the Regulations Governing Patent Agents, first announced by the MOEA in July 1953, would become ineffective from 1 January 2003. However, the draft Law of Patent Attorneys is still pending discussion and review before the Legislative Yuan. To prevent a hiatus occur-ring in which there would be no legal basis for regulating patent agents, the amendments to the Patent Law introduced a provision that until such time as the Law of Patent Attorneys is enacted, regulations governing the admis-sion, revocation and cancellation of patent agents' qualification and their practice, shall be promulgated by the competent authority. The amended Article 11 took effect on 6 February 2003.
Under the current law, the wording used to define various time periods is not consistent, so that the starting date may be the day of a particular event or the following day in some other cases. To avoid confusions, the former starting day is adopted in all instances, and Article 20 explicitly provides that the day of the event in question is not included in the calculation, except where explicitly otherwise provided (for instance, a patent term runs from the actual filing date).
Under the current law, to obtain a filing date for a new patent application, the applicant must not only submit an application form, patent specification and necessary drawings, but also pay filing fees. However, fee pay-ment should more appropriately be a matter that can be subsequently supplemented. To protect applicants' interests, the requirement making fee payment a condition for obtaining a filing date has been removed. If an applicant fails to pay the fee in full despite a notice to cure, the application will not be accepted. Under the current law, the documents to be submitted when filing a patent application in-clude, among others, an Oath signed by the inventor. To simplify the patent application procedure, the requirement to submit an Oath is now deleted. But, if the application is filed by a person other than the inventor, the ap-plicant (assignee) must still submit an As-signment evidencing the right to apply for a patent.
To relax patent application procedure, provi-sions regarding international priority claims have been amended as follows:
An applicant asserting a priority claim must make a declaration on the claim at the time of filing his ROC (Taiwan) patent application, and must state in the written application the filing date of the corresponding basic applica-tion and the country in which it was accepted. The current law requires the application number of the corresponding basic application be also stated at the time of patent filing. Under the amended law, an applicant will be able to submit this application number infor-mation subsequently. An applicant will have a period of four months (currently, three months) from the filing date to submit a priority claim.
To make the criterion with respect to deter-mining novelty, inventive step, and creativity clearer and more comprehensive, the con-cerned provisions have been revised, taking into consideration practices in relevant foreign counties. For example, the fact of being known by the public prior to patent filing is now explicitly listed as one of the grounds for lacking novelty, while an involuntary disclo-sure against the applicant's will is now stated as one of the exceptions to the general rule on novelty, provided that an application is filed within six months after such disclosure. The criterion for judging inventive step of an in-vention or new utility model, or creativity of a new design, are amended to require that an invention or creation could not have been easily completed or conceived by a person with ordinary skills in the concerned tech-nology field.
In line with the international trend toward a gradual relaxation in the disclosure require-ments for patent specifications, and to avoid dispute that have arisen under the current practice, the provisions on the disclosure in a patent specification, and on amendments and corrections thereto are amended for greater clarity. For example, under the amended provisions, an invention or new utility model patent specification should contain the title of invention or creation, a description of the in-vention or creation, an abstract and claims. The specification should clearly and fully disclose the invention or utility model so as to enable a person with ordinary skills in the concerned technology filed to understand its content and put it into practice based on the disclosure. The specification and drawings of a new design patent application should include the title of new design, a description of crea-tion, descriptions of drawings, and drawings, and should clearly and fully disclose the new design, so that a person with ordinary skills in the concerned technology filed can understand its content and put it into practice based on the disclosure. Any amendments or corrections made to a specification or drawings of a new utility model patent application must be made within two months following the filing date.
Following the practice adopted in major countries throughout the world for examina-tion of utility model patent applications, the relevant provisions are amended to change over to formality examination system for new utility model patents, to enable patent rights to be granted more quickly.
The change to formality examination of new utility model patent applications will lead to increasing uncertainty as to the content of new utility model patent rights and their contents. Taking into consideration the relevant foreign practices, the amendments introduce the prac-tice of new utility model technical reports. After a new utility model patent is published, any person may apply with the IPO for a new utility model report. Also before enforcing a new utility model patent, the patentel must present such report, and that if a new utility model patent is invalidated, the patentee will be liable to compensate third parties for losses they have incurred due to enforcement of the patent against them before its invalidation. However, a patentee who relied on the content of such report, or exercised due care in en-forcing such rights, will be presumed not to have been at fault.
A new utility model patent will expire after a period of 10 years (currently 12 years) from the filing date.
To comply with Article 5 of the LAP, new provisions are introduced enumerating the statutory grounds for issuing a decision to re-ject a patent application.
The amendments extend the time limit for requesting a reexamination to 60 days (cur-rently 30 days) from date of receiving an examination decision. Also, if an applicant wishes to convert his patent application into a new patent category with the original filing date maintained, the conversion request must be submitted before receiving a decision to grant a patent, or within 60 days (currently 30 days) after receiving a decision not to grant a patent.
The current law provides two distinct oppor-tunities for the public to raise objections to published and granted patent cases: opposition actions (filed after a patent application is al-lowed and during the publication period) and cancellation actions (filed after patents are issued). To avoid lengthy opposition proce-dures being used to obstruct or delay the pro-tection of patentees' rights, and in view of the fact that the existing grounds and procedures for cancellation actions are largely identical with those for opposition actions, the amendments abolish opposition actions, and incorporated the statutory grounds for opposi-tion into the grounds for cancellation, thus integrating the two systems. The provisions on the granting of patent rights are also amended so that an applicant may pay the requisite fees and receive a patent certificate as soon as the application is approved, and patent rights take effect from the date of pub-lication.
Under Article 28 of the WTO's Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs), a patentee shall be entitled to prevent third parties from making, using, of-fering for sale, or selling items covered by a patent, or from importing them for any of the above purposes. Therefore, "offering for sale" is added to the list of acts to which the force of a patent extends.
To avoid complicating the examination pro-cedure and changes in the scope of patent rights, many countries do not allow patents to be divided. Therefore the current Article 68, which allows division of granted patents, is repealed.
The Criminal Law, the Fair Trade Law and the Civil Law all contain adequate provisions to deal with the marking of patented goods. Thus, provisions of the current law prohibiting false or misleading patent marking, and im-posing related criminal penalties, are repealed.
To protect the lawful interests of patentees, a new provision empowers the IPO to expedite examination of cancellation actions that are connected with court cases over infringement of patent rights.
To achieve the goal of complete decriminali-zation of patent infringements, provisions imposing criminal penalties for infringement of new utility model patents and new design patents are repealed.
To facilitate the implementation of the amended articles, special provisions are in-troduced to deal with how to handle the con-cerned cases during the transitional period.
The amendments are extensive. Lee and Li has prepared materials describing the new law in more detail. Readers wishing to ob-tain a copy are welcome to contact us.