Newsletter
2003 AMENDMENT TO PATENT ACT TOOK EFFECT
As previously reported, with respect to the 2003 amendments to the Patent Act, the amended Ar-ticle 11 and the amendment with respect to de-criminalization for patent infringement took ef-fect in 2003, and the remainder of the amend-ments came into force on 1 July 2004. The main points of the newly effective amendments are as follows:
At the time of filing a patent application, an applicant is no longer required to submit an Oath signed by the inventor(s). For a patent application filed by an assignee, the applicant must submit an Assignment signed by the in-ventor(s), assigning the right to apply for a patent to the assignee. Except for the docu-ments that are needed to lawfully obtain a filing date (application, patent specification, and necessary drawings), if, at the time of filing, the applicant is unable to submit other required documents or information, they may be submitted within a period of four months from the filing date. If necessary, this period may be extended to six months by prior ap-plication.
New utility model applications filed on or af-ter 1 July 2004 as well as those filed previ-ously of which the examination has not been concluded before 1 July 2004, are all subject to formality examination. If the Intellectual Property Office (IPO) intends to reject an ap-plication, it must first notify the applicant, setting a time limit for the applicant to submit a response or propose amendments. A new utility model applicant who plans to amend the patent specification (including claims) and drawings on his own initiative must apply to do so within two months from the filing date. But this time limit does not apply if the ap-plicant is instructed to make amendments by the IPO.
Following this switch to formality examina-tion, the reexamination procedure no longer applies to new utility model applications. The amended Act allows an invention or new de-sign application to be converted into a new utility model application, and a new utility model application into an invention applica-tion. But, an application for conversion must be filed before the original application is al-lowed, or within 60 days after receiving an examination decision rejecting the original patent application.
A new utility model patent has a patent term expiring 10 years after its filing date. After a new utility model patent is granted and pub-lished, anyone may apply to the IPO for is-suance of a new utility model technical report to address matters such as novelty, inventive step, and first-to-file requirements. If a new utility model patent is revoked, the patent holder should compensate others for losses caused by enforcement of the patent prior to its revocation. However, a patentee who re-lied on the content of a new utility model technical report, or who has exercised due care when enforcing his patent right, will be pre-sumed not to have been negligent.
Under the new Act, an invention, new utility model, or new design that has been known to the public before the filing date (or priority date) may destroy its novelty. However, an invention, new utility model, or new design that has been published or publicly used, or that has become publicly known before the filing date (or priority date) would not lose its novelty if the concerned public disclosure was against the intent of the applicant and a patent application was filed within six months from the date of such disclosure.
A separate patent application must be filed for each invention or new utility model for which patent protection is sought. However, where two or more inventions or utility models be-long to a single general inventive concept they may be included in a single application.
If two or more patent applications are filed in respect of the same invention or creation, a patent may be granted only in respect of the application that was filed earlier or earliest. This also applies to multiple applications filed by the same applicant, and to separate inven-tion and new utility model patent applications respectively filed for the same invention or creation.
The new Act abolishes the opposition proce-dures. After a patent application is allowed, the applicant should pay the certificate fee and the first year annuity within three months after receiving the written allowance decision, and upon receipt of these fees, the IPO will issue a patent certificate and publish the patent grant. If an applicant fails to duly pay the certificate fee and annuity, the patent right will be deemed never to have existed. Opposition actions initiated before 1 July 2004, which are not concluded by that date will be continued to be handled based on the provisions of the old Act. Opposition petitions may still be filed in respect of patent applications that are pub-lished before 1 July 2004.
The new Act does not allow a division of any granted patent. Applications for dividing granted patents that are filed before 1 July 2004 and not yet decided by that date, will continue to be handled according to the old Act.
The new Act confers a patentee with the right to bar others from offering for sale the prod-ucts covered by his patent without consent. When a patent is infringed, in addition to the patentee, an exclusive licensee may also seek legal remedies, unless this is forbidden by the licensing agreement.
The new Act provides that when determining whether to suspend proceedings of litigation over patent rights, the court should consider the legitimacy of any cancellation action, and that when a cancellation action relates to the hearing of an infringement litigation case, the IPO should give priority to its examination of the cancellation case.
A patentee that is a natural person, a school, or a small or medium-sized enterprise may apply to the IPO for a reduction of patent annuities. In compliance with the above-mentioned amendment, the Ministry of Economic Affairs has amended the Regulations for Reduction and Exemption of Patent Annual Fees, which took effect on 1 July 2004.