The Third Reading of Amendments to Patent Act Passed

The Draft Amendments to Patent Act were passed by the Legislative Yuan on November 29, 2011. There are 159 articles, including 108 revised, 36 augmented and 15 deleted articles, in the Amendments to Patent Act. The effective date of the Patent Act will be decided by the Executive Yuan.

It has been over eight years since the latest Amendment to the Patent Act in February 2003. To boost innovation, research and development of domestic industries, strengthen the patent examination system and bring the domestic patent system more in line with international practices, the Executive Yuan submitted the Draft Amendments to Patent Act to the Legislative Yuan on December 11, 2009 for review. On November 29, 2011, the Amendments were passed.

The main points of the Amendments are as follows:

(1) Augmenting provisions that the applicants can claim grace period even though his/her invention, prior to applying for patent, has been published; however, the patent application has to be filed within six months from the date of occurrence of fact of the foregoing cause.

(2) Augmenting provisions that the applicants or patentees, who lost their rights as they unintentionally failed to claim priority rights when filing or failed to pay the Patent Certificate fees or annuities on time, can apply for reinstatement of rights.

(3) Allowing scope of claims and abstract of invention to be independent from the specification.

(4) Deleting the time limitation for applicants wishing to amend applications, and allowing divisional applications to be filed within 30 days from the date on which an approval decision for the original patent application was issued.

(5) Augmenting and revising conditions that were excluded from the scope of patent right, including private acts that are for non-commercial purposes, research and testing acts that are necessary for obtaining drug regulatory approval in Taiwan and abroad, the adaptation of international exhaustion principles, etc.

(6) Revising provisions regarding the extension of patent terms for pharmaceutical- and agrichemical-related invention patents.

(7) Revising conditions, procedures and compensation for compulsory licensing.

(8) Augmenting provisions that a compulsory license may be granted to manufacture pharmaceutical products for export to developing countries and underdeveloped countries to help solving public health problems.

(9) Revising the patent invalidation system, including abolishing examination by ex officio actions, allowing invalidation actions to be filed against a single claim, consolidating examination for invalidation actions and corrections, as well as consolidating decisions for invalidation actions and corrections.

(10) Clarifying the subjective requirements for patent infringement, revising the methods of calculating damages, and eliminating the provision stating that damages may not be claimed in case of failure to affix a patent mark.

(11) Augmenting provisions that allow a single applicant to file an invention patent application and a utility model patent application for the same creation on the same date. When the TIPO determines that the invention patent application is grantable, it will notify the applicant of selecting one application. Once the applicant selects the invention patent, the right for the utility model patent shall not exist ab initio.

(12) Bringing partial designs, computer-generated icons and graphical user interfaces (icons & GUIs), and sets of articles into the scope of patent protection and introducing the derivative designs system.

In the original Draft Amendments to Patent Act, patent protection for plants and animals was completely opened. However, no consensus could be reached. The Council of Agriculture took account of the current status of domestic industries and the possible impact of opening plant patents, and recommended postponing the open of plant patents since the plant is currently protected by the plant variety right. If a consensus could be reached for the status of technology development and actual demand of industry, the amendment will be submitted. Therefore, patent protection for plants and animals is not included in the Amendments.

Since the Amendments to Patent Act involve many reforms of Taiwan’s patent system and people from different sectors of society need time to fully understand and adapt to the operation of the reformed systems, the effective date of this Act will be decided by the Executive Yuan. The TIPO has already begun preparation on supplementary measures that include amended patent rules and examination guidelines, revised patent application forms, and updated computer systems.