Deep & Far Newsletter 2013 ©

New Taiwan Patent Law

Prepared by Deep & Far, January 2013

Taiwan Patent Law has been amended to be promulgated on December 21, 2011 by the Presidential Decree, and designated to take effect from January 1, 2013 by the Executive Yuan. We have prepared a well-translated English version whose accuracy, conciseness and preciseness could not be found elsewhere. We hereby briefly introduce contents of the major amendments as follows:

1. As is known, Taiwan Patent Law includes patents for invention, utility model and design. It might be interesting to note that in the past, ‘design’ was translated as ‘new style (or pattern)’ but now is translated as ‘design.’

2. A researching act is conducted for an uncompleted creation so that it needs not be protected under the grace period system. The grace period system now additionally applies to the judgment of non-obviousness or inventive step, instead of novelty only in the past. The scope of circumstances under which the grace period applies is expanded to cover the one ‘disclosed without the intention of the applicant.’ (Articles 22(3)(1), 22(3)(4) & 122)

3. Claims and abstract are now independent of the specification, which means claims and abstract are not parts of a specification. (Articles 23 & 25)

4. ‘Methods of diagnostic, therapy or surgical operation for diseases of human body or animal’ in the old law is now amended into “Methods of diagnostic, therapy or surgical operation for human body or animal” in the amended law to make it clear that such methods need not be related to ‘any kind of diseases.’ (Article 24(2))

5. It is specifically provided that the foreign text based on which a local filing date is secured shall not be amended where the foreign languages include English, Japanese, German, French, Korean, Arabic, Russian, Portuguese and Spanish. (Articles 25, 44, 67, 106, 110, 125, 133, 139 & 145)

6. The deposit-evidencing document could now be belatedly submitted within four months after the filing date for a biological material-related application. (Article 27)

7. Restoration regimes for unintentional failure to claim priority, to successfully claim priority and to duly pay the annuity where the restoration effect shall not extend to one who, after extinction of the patent right but before restoration of the patent right, has practiced in good faith or completed necessary preparations therefor. (Articles 29, 52, 59 & 70)

8. The opportunities for filing divisional applications have been broadened. Specifically, for a complete prosecution before the Taiwan IPO stage, there will involve two phases, i.e. the preliminary examination phase performed by a first examiner and the reexamination phase performed by a second examiner who must be different from the first examiner. It is the unique feature of this country to adopt such system to curb the possibility of a prejudicial first examiner, in the preliminary examination phase, rejecting an application which should be granted a patent. Certainly, a subtle one might raise a question how to exclude the possibility of a favorable first examiner allowing an application which should not be granted. It is now possible to file a divisional application within 30 days after the service of an office action granting an application in the preliminary examination phase. By this, one needs to alertly know that it is no more possible to file a divisional application after the service of an office action granting an application in the reexamination phase. It is strongly believed no one in the world could advance convincing reasons to justify the difference to this effect between office actions in the two phases. (Article 34)

9. The time limit for submitting voluntary amendments is lifted until the response deadline prescribed in a first official communication. In addition, there is newly introduced a ‘final notice’ system, by which the applicant is provided with a last opportunity to comply with requirements made by an examiner in either the preliminary examination phase or the reexamination phase. A requirement in the final notice issued in the preliminary examination phase is still binding in the reexamination phase unless lifted by the second examiner. Failing to so comply with, a formal office action is definitely anticipatory. (Articles 43 & 46(2))

10. For pharmaceutical (excluding veterinary drug) or agrochemical, the limitation is lifted that the petition for a patent term extension could be made only if the period within which an invention cannot be practiced because of petitioning a permit (or an administrative approval) spans over two years after issuance. It is made clear that the patent term shall be deemed having been extended if the IPO has not rendered an action before the original patent term expires. A new article makes it clear that the scope of an invention patent granted a term extension by the IPO shall only cover that limited by both the active ingredients and use held in the permit. Although the applicant could optionally base on one of the various permits for patent term extension, only the first obtained permit in respect of both correct ingredients and use is the legal one for petitioning the extension. (Articles 53, 54, 56 & 57)

11. The definition of ‘practice’ is made to be referred to an act of making, offering for sale, selling, using, or importing the product for the aforementioned purpose because it is believed ‘practice’ is the generic term of ‘use.’ (Article 58(2))

12. It is made clear that the patent exhaustion should be international, and an invention patent right shall not be enforced against (1) non-public acts for non-commercial purpose(s), (2) necessary acts to practice the invention for research or experimental purpose, (3) research, experiment and the necessary acts thereof for the purpose of obtaining inspection registration and marketing approval of a drug under the Pharmaceutical Affairs Law, or (4) the circumstance where the invention has been practiced or necessary preparations therefor have been completed prior to restoration, wherein Item (1) is not limited to acts of research or experiment and Item (2) is not limited to non-commercial purposes. (Articles 59 & 60)

13. Provisions regarding acts of tie-in and tie-out are deleted for governance by the Fair Trade Law. The relationship among the exclusive licensee, a sole licensee, a non-exclusive licensee and the patentee is introduced. In theory, an exclusive licensee could exclude the patentee from practicing the patent while a sole licensee could not. (Articles 62 & 63)

14. Circumstances under which a patentee may petition to correct newly introduce one item, i.e. ‘deletion of claim’, which is split from the old item ‘reduction of claim.’ Specifically, the new item ‘reduction of claim’ will not cover the new situation of ‘deletion of claim’, by which it is made clear that the former is directed to something different from the latter. As a matter of fact, this amendment is driven by this firm having successfully litigated a case before the IP Court (98行專訴字第45號) that an incorporation of contents from the description into the claim after grant (or during the correction petition stage) in the invalidating proceedings should be allowable. (Article 67(1))

15. The patentee may apply for restoration of the patent rights within one year after expiration of the period by paying a triple amount of the annuity. (Article 70(2))

16. The ex officio invalidating proceedings or ex officio notifying correction in the proceedings are cancelled to reflect the reality that it appears no one has ever or rarely so experienced. Nevertheless, such cancellation is compensated or replaced by a more practical new provision that upon examination, the patent office may consider ex officio the reason and evidence not submitted by the invalidator within the scope of the invalidation claim, and notify the patentee to respond within a specified period. Also, a partial invalidation, withdrawal of invalidation or incorporation of invalidations is now possible, by which a ridiculous phenomenon is resolved that a patent having only a portion of claims successfully invalidated is to be entirely cancelled. (Articles 73, 75, 77 & 78 - 82)

17. In a national emergency or other significant urgent circumstances, the IPO may grant a compulsory license for the required patent right, and notify the patentee as soon as possible. For petitioning a compulsory license under the new law, there must be some special reasons, e.g. public interests, in addition to the requirement in the old law that the petitioner could not reach an agreement on license within a considerable period by offering reasonable commercial terms. Amended provisions for compulsory license and public hygiene could be found from Articles 87 through 91.

18. It is made clear that a patent infringement only happens with intent or due to negligence. The reasonable royalty is now an option for damages. Patent marking may be alternatively made. (Articles 96 – 98)

19. The new law explicitly provides how to resolve the situation that the same creation is filed for an invention and a utility model patents at the same time where the two applications have the same subject matter or claims. A correction petition made to a utility model patent is subject to formal examination only but to substantive examination under the same office action for the invalidation if incorporated therewith. (Articles 32 & 118)

20. A partial design, icons, graphic user interfaces or a set of articles are now subject to a design patent protection. The associated design system is abolished because it is only used to define the protecting scope of the parent design while the derivative design system is newly established and covers an extended scope of a design similar thereto. Nevertheless, the set of articles need be enforced altogether rather than separately. (Articles 121, 127 & 129)

21. Assignments or declarations are no more required for applications filed either before or after the effective date of the amended new law, i.e. January 1, 2013. Specifically, only power of attorney is required now for filing a patent application.