The Taiwan Intellectual Property Office ("TIPO") held public hearings for the "Draft Revision to the Patent Attorney Act" on January 3 and January 27, 2014.  At present, the proposed revisions primarily comprise the following:

 

1.    Addition of a provision for exemption from examination of patent examiners: All patent examiners who have passed the relevant national examinations and have been working as a patent examiner for more than 8 years may apply for a partial exemption from the Patent Attorney Examination. 

 

2.    After an individual passes the patent attorney examination, he/she shall still be required to pass pre-job training before he/she may apply for a patent attorney license. 

 

3.    With respect to the mode of practice of a patent attorney, other than by way of establishment of a patent attorney firm or employment with firms specializing in patent attorney work, an additional "employment by legal entity" mode is appended.  In the latter case, the patent attorney is restricted to accepting only the patent attorney work of the legal entity which employs him/her; he/she is not allowed to unilaterally accept external cases. 

 

4.    In terms of business scope, other than the original three special businesses (including patent applications; request for invalidation trial of patent; and assignment for transfer, creating trust or pledge of, licensing for implementation and compulsory licensing of patent rights), verification of patent infringement and patent advisory work are added.  It must be noted that the above additional businesses are not exclusive to patent attorneys. 

 

5.    An on-the-job training system is also added for patent attorneys.  The system requires that patent attorneys should continue to participate in on-the-job training and present to the competent patent authority documentary proof of completion of the training every two years.  If a patent attorney does not accumulate the minimum number of hours or subjects prescribed by the Patent Attorney Association, the competent patent authority shall notify him/her to complete a supplementary revision within six months of such notice; failure to do so will result in the patent attorney from being suspended from practicing as a patent attorney.  A patent attorney who has been suspended from practice for the above reasons may, upon completion of supplemental revision, attach the relevant documentary proof to his/her written application to the competent patent authority to restore his/her qualifications for practice. 

 

6.    Increased penalties for illegal practice:

 

(1)  Conduct warranting criminal sanctions:

 

(a) A person without a patent attorney license who intends to personally handle or employ patent attorneys to handle businesses exclusive to patent attorneys for profit shall be liable for imprisonment for a period of not more than three years, detention or a fine of not less than NTD 400,000 but not more than NTD 2,000,000, or both.  

 

(b) A person who provides his/her patent attorney license for use by others shall be liable for imprisonment of not more than two years, and/or a fine of not less than NTD 200,000 but not more than NTD 1,000,000. 

 

(c) A person who does not possess a patent attorney license who is found to have solicited business, and who fails to heed a cease and desist warning within certain deadline, or who resumes such activity after ceasing to do so, may be fined an amount of not less than NTD 300,000 but not more than NTD 1,500,000, as well as ordered to cease and desist within certain deadline.  If after such deadline the person continues in his/her action or resumes after ceasing his/her actions, he/she shall be liable for imprisonment for a period of not more than three years, detention or a fine of not less than NTD 400,000 but not more than NTD 2,000,000, or both. 

 

(2)  Conduct which warrants administrative sanctions:

 

(a) A patent attorney who is not a member of the Association or who has been suspended from practice but continues to handle activities exclusive to patent attorneys shall be liable for fine by the competent patent authority of not less than NTD 60,000 and not more than NTD 300,000, as well as being ordered to rectify or cease his/her actions within certain deadline.  Where the patent attorney fails to so rectify or cease his/her actions, he/she may ordered to rectify or cease his/her actions within fresh deadline, as well as subject to the aforesaid fine until he/she so rectifies or ceases his/her action. 

 

(b) A person who is not qualified to use the title of patent attorney or patent agent and who so uses may be fined an amount of not less than NTD 30,000 and not more than NTD 150,000 by the competent patent authority, as well as ordered by such authority to cease his/her actions within certain deadline.  If the said person does not cease such action upon the expiration of such deadline, he/she shall be liable to fines until such time that he/she ceases his/her actions.  The aforesaid shall apply also to persons in cases where the license of the patent attorney or patent agent has expired or been revoked. 

 

Since this draft revision is arguably the most extensive revision since the promulgation in 2008 and revision in 2009 of the Patent Attorney Act, there is sure to be extensive deliberation and debate during its public hearing.  It will also have a significant impact on the practice of patent attorneys while at the same time offering greater protection to the interests of patent service users.  Our firm will continue to closely monitor the progress of subsequent revisions.