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On 6 April 2011, the Economic Affair Committee of the Legislative Yuan, after conducting discussion at four review meetings, concluded their review of the Patent Act Amendment Bill. As our readers may have noted, to adapt to the execution of the Cross-Strait Intellectual Property Right Protection Cooperation Agreement ("IPR Agreement"), Articles 28 and 29 of the Patent Act were earlier amended (such amendments have been announced). In the Patent Act Amendment Bill, there are some proposed amendments that are relate to the newly amended Articles 28 and 29, and the Economic Affair Committee need to review such proposed amendments that are related to Articles 28 and 29. Except the above, the Economic Affair Committee has passed all other proposed amendments in the Patent Act Amendment Bill, which involves changes of 162 articles (amending 108 articles, adding 39 articles and deleting 15 articles).
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For the topics that were concerned during the review process of the Economic Affair Committee, such as Sheji ("Design") patent protection covering fine arts handicraft, the scope of self use by farmers, the agricultural technology policies after granting patent protection to plant per se inventions etc., the Intellectual Property Office (IPO) shall coordinate with the Executive Yuan Council of Agriculture (COA) to design and promulgate the precise implementation measures in compliance.
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It has been more than 8 years since the amendment of the Patent Act as announced in February 2003. If the Patent Act Amendment Bill (as passed by the Economic Affair Committee) will be passed by the Legislative Yuan, it will facilitate the development of local biotechnology, dedicated agriculture and cultural creativity industry,upgrade the patent examination, strengthen patent protection, and facilitate Taiwan’s interface with international society. The amendments passed by the Economic Affair Committee are as follows:
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Patent protection shall be granted to animal or plant per se inventions. New provisions shall be introduced into the Patent Act with respect to free of liability regarding self uses by farmers, patent right exhaustion, cross licensing between owners of patent rights and plant seedling rights etc.
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Where priority claim is not made at time of patent filing by a patent applicant or where a patent owner does not pay an annuity on time causing the patent right to become extinguished, the patent applicant or patent owner shall be entitled to revive the priority claim or revive his/her patent right through a reinstatement procedure, provided that the default as stated above is not made intentionally.
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The timing restrictions for making amendments for invention patent applications shall be deleted. A patent applicant shall be allowed to effect a patent division of his/her invention patent application if such division is made no later than an expiry of 30 days from the date of receiving an allowance decision issued at the 1st examination stage.
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Amendments shall be made with respect to patent term extension matters for pharmaceutical-related or agrichemical-related patents.
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Amendment shall be made with respect to "limitations to patent right" so that a non-public act for non-commercial purpose, an act needed to obtain a local or foreign drug permit shall not be deemed as patent infringement; international patent right exhaustion shall be clearly brought into the Patent Act.
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Amendments shall be made with respect to compulsory patent licensing practice as well as the way of deciding compensation for compulsory patent licensing.
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Practice regarding patent cancellation (invalidation) actions shall be changes, such as abolishing revocation action initiated by the IPO, allowing filing a cancellation action against partial claim(s), combined examination and decision of multiple cancellation actions, combined examination and decision for cancellation action(s) and a patent correction application, etc.
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Amendment shall be made with respect to the subjective factor for patent infringement, calculation of damage claim, patent marking etc.
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Amendment shall be made to dual patent filing (i.e., the same applicant files an invention patent application and a utility model patent application for the same invention on the same day), as well as adopting formality examination for a correction of a granted utility model patent.
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Patent protection shall be granted to particle designs, icons and GUI and designs applied to articles in set. Derivative design patent right practice shall be brought into the patent system in Taiwan.
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The ongoing amendment of the Patent Act, once passed, shall involve significant changes of the patent practice in Taiwan. To facilitate the general public’s understanding of the changes and adaption to the changes, the date of implementing the new Patent Act shall be announced by the Executive Yuan. The IPO is now studying and drafting the relevant implementation rules or guidelines (such as the amendments to the Enforcement Rules, Patent Examination Guidelines, application forms, etc.) and the IPO is also preparing for its new computer systems used to implement the new Patent Act. We will closely monitor the development of the amendment and keep our readers informed in due course.
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