Amendments to the Patent Act

On 29th November 2011 the Legislative Yuan passed the amendment to the Patent Act proposed by the Executive Yuan. The Patent Act was amended to cover a total of 159 articles (108 amended, 36 added and 15 deleted) since the previous comprehensive amendment in 2003. The Taiwan Intellectual Property Office (TIPO) has listed the key amendments as follows: 

• The patent applicant may now claim a grace period not only for unintentional disclosures, but also for disclosures in any printed publications within six months before the filing date (such printed publications are not limited to academic publications). 
• The restatement of rights mechanism has been introduced, for which the rules for restatement of rights now apply to the forfeiture of patent rights for matters such as unintentional failure to claim priority rights at the time of application or failure to pay patent annuities. 
• The claims and abstract are no longer regarded as part of the specification, but rather as independent sections. 
• The time limit for initiative amendments by the applicant has been removed; however, when an office action is issued, amendments are allowed only within the time limit specified in the office action. Furthermore, a final office action may be issued after the first if deemed necessary, within which amendments are allowed only in relation to:
  • Deleting claims. 
  • Narrowing the scope of claims.
  • Correcting erroneous descriptions.
  • Clarifying unclear descriptions.
• Divisional applications may now be filed within 30 days of the date of approval of the original patent application. 
• The scope of the limitation of the patent right has been extended, including private acts for non-commercial purposes and acts that are necessary to obtain drug regulatory approval in Taiwan and abroad. The principle of international exhaustion has also been adopted. 
• The extension of patent terms for pharmaceutical or agrichemical patents due to regulatory approvals is no longer limited to a minimum of two years. The patentee may apply for the extension of the patent term only for such patents based on the first regulatory approval, and such regulatory approval may be used once only. 
• Amendments also include requirements for applying compulsory licences. The condition of “failure to reach a licensing agreement with the patentee concerned under reasonable commercial terms and conditions within a considerable period of time” has become a prerequisite for the application of a compulsory licence for public non-commercial use, or for a dependent patent involving an important technical advance with considerable economic significance. In addition, TIPO must now determine the amount of compensation when granting compulsory licences. 
• A compulsory licence to produce pharmaceutical products for the purpose of solving public health issues in developing or least-developed countries may now be granted. 
• The intentional or negligent act of the infringer as a requirement for the claim of damages for patent infringement, and the option of determining the amount of damages by a reasonable royalty for the use made of the invention by the infringer, have also been codified. In addition, the burden of proof has been clarified: when no patent markings or notices appear on a patented article, the claimant shall prove that the infringer has or may have knowledge of the fact that sucharticle is under patent protection. 
• A new provision states that an invention patent and a utility model patent application for the same creation may be filed at the same time by the same applicant. TIPO will notify the applicant to select one patent within a specified time limit; if no patent is selected, the patent shall be deemed non-existent ab initio. 
• Partial designs, computer-generated icons and graphical user interfaces are now allowed as patentable subject matter, and the derivative designs system has also been introduced.

Other amendments include:

• The revision of the patent invalidation system, including the abolishment of examination by ex officio action.
• The introduction of invalidation actions filed against part of claims.
• The combination of procedures for invalidation actions and corrections. 
• The combination of decisions for invalidation actions and corrections. 

The Executive Yuan is to announce the date on which the act will take effect.