Newsletter
PUBLIC HEARING ON PATENT ACT AMENDMENTS
In order to gather opinion from a wide range of stakeholders, on 18 July 2006, the Intellectual Property Office (IPO) held a public hearing to discuss the following issues regarding the pro-posed amendments to the Patent Act:
Should the Act Permit Dual Filing Practice (Filing Invention and New Utility Model Patent Cases at the Same Time)?
According to Article 31 Paragraph 4 of the current Patent Act, where applications for in-vention and utility model patents are both filed on the same day by the same applicant in re-spect of the same invention or creation, the Patent Authority should set a deadline for the applicant to choose one of the applications with which to proceed; if two or more appli-cations are filed by different applicants, the applicants should be instructed to negotiate so as to determine which application should proceed further on the patent application. If these applicants make no selection, or are unable to reach an agreement, before the deadline set by the Patent Authority, neither an invention patent nor a utility model patent will be granted.
Following the adoption of formality examina-tion for new utility model patent applications, patent practitioners have repeatedly suggested that the government consider changing the current laws so as to allow a patent applicant to simultaneously file applications for both an invention patent and a new utility model pat-ent in respect of the same invention. If both applications are granted, a combined patent would be issued, conferring linked patent rights so as to provide greater protection.
Should the provisions governing new utility model technical reports be changed?
Currently, new utility model patent applica-tions are subject to formality examination, and new utility model patent technical reports do not have the force of an administrative dispo-sition. The legislative intent behind the cur-rent system is to accelerate the grant of new utility model patents. However, various stakeholders have commented that the result of formality examination is that during the process of obtaining new utility model tech-nical reports, the holder of a new utility model patent has no opportunity to respond with re-gard to the appropriateness of the patent claims or the content of amendments made prior to grant of patent; since the report is not an administrative disposition, there is no re-course to administrative remedies with regard to the report itself. Therefore, stakeholders have suggested that new utility model patent system be adjusted.
Remedies after Missing Annuity Payment Deadlines
Currently, where a patentee fails to pay an annuity for the second or any subsequent payment year of a patent term before the deadline for effecting a late payment, the patent right will become extinguished from the day following the original due date. The above does not apply where a reinstatement procedure prescribed in Article 17 Paragraph 2 of the Act (i.e., the deadline is missed due to natural disaster or other circumstances not at-tributable to the applicant) is properly filed and accepted.
In order to better safeguard patentees' rights, the IPO is considering adding a provision to the Patent Act, so that where a patentee misses the deadline for effecting a late payment of an annuity for reasons attributable to the patentee but where there are legitimate grounds, the patentee may apply for reinstatement of the patent right within one year following the late payment deadline.
Rules for Foreign-language Documents
According to Article 25 of the current Patent Act, the filing date of a patent application re-fers to the date on which the written applica-tion, specification, and necessary drawings are all submitted. If the specification and/or drawings is/are submitted in a foreign lan-guage, and the applicant later submits a Chi-nese-language version by the deadline set by the IPO, the date on which the for-eign-language version is submitted will be recognized as the filing date.
Thus, to maintain the date of submitting for-eign-language documents as the filing date for a patent application, the applicant must pre-pare a written application and the for-eign-language specification and drawings before that date. In practice, disputes over Article 25 are often seen at the procedural examination stage. The IPO proposes that the Patent Act be amended to empower the IPO to define in the Enforcement Rules of the Patent Act the acceptable foreign languages and the required content of such foreign-language specifications and drawings.
We will closely follow up the progress of the amendments, and keep readers informed.