Taiwan Patent Act undergone significant amendments in 2011 and finally came into force on January 1, 2013. However, the legislators have recently found default articles in the Act and proposed several amendments to rectify these articles. Accordingly a partial amendment to Taiwan Patent Act involving Article 32, 41, 97, 116 and 159 have been swiftly passed the third reading by Legislative Yuan on May 31, 2013 and then approved by the Executive Yuan. Finally said partial amendment of Taiwan Patent Act is announced by the Presidential Order and takes effect starting from June 13, 2013. The contents of the partial amendment include the following:
- Where an invention patent application and utility model patent application are filed on the same day by a same applicant based on the same invention/creation, the applicant must declare the filing of each other application in the respective application of both the invention and utility model applications. Also, since a utility patent application is adopted only formality examination, it will be allowed and granted patent much earlier than the invention patent application filed on the same day (the allowed decision on a utility model application will normally be made within about 6 months after the completion of its filing formalities); when the invention patent application is allowed after the substantive examination has been conducted thereon, the examiner will notify the applicant to make a choice on retaining the protection of either the invention or the utility model patent in order to avoid double patenting; if the applicant fails to make the above declaration on dual-filing of applications or fails to choose either one of the allowed invention or utility model applications within the prescribed term set by the examiner, the invention patent shall not be granted. If the applicant has chosen the invention patent, the previous granted utility model patent right shall become extinguished from the publication day of the invention patent. In contrary to this amendment, it was deemed non-existent ab initio for the granted utility model patent right after the applicant opted to choose the granted invention patent before the partial amendment of this Act. Thus the new Act provides a continuous protection, namely, protection by the utility model patent before the invention patent is granted, and protection by the invention patent after the invention patent is granted.
- When exercising a utility model patent, if the patentee fails to present a utility model patent technical report, he shall not send a warning letter to the alleged infringer. Since the granted utility model patent is allowed and granted patent without substantive examination, the technical report will provide evaluation as whether the granted utility model patent meets the patent requirements and therefore could be used to prevent the abusive issuance of warning notices. But it should be noted that such technical report issued by TIPO upon request of any person merely serves as a reference and does not have any legal binding effect.
Meanwhile, after the laid-open of an invention patent application, the applicant can send a written notice to the person or party that is allegedly infringing his invention and then claim the appropriate compensation if said person or party continues to commercially practice the invention. Now the dual filing of invention and utility model patent applications was amended to provide the continual rights of the patentee after he has chosen to retain either one of the granted (invention or the utility model) patents. Therefore the patentee could only choose alternatively one of the rights to claim compensation on the granted invention patent or to exercise the utility model patent right.
- The punitive damage claims was demolished when the revised Taiwan Patent Act was enforced on January 1, 2013. According to Taiwan Intellectual Property Office, punitive damages are commonly awarded by the court in most Anglo-American jurisdictions, but the damage compensation in the civil action of Taiwan is usually calculated based on the principle of indemnity. However the legislators felt that punitive damage claims are commonly seen in the Copyright Act, Trade Secret Act, Fair Trade Act and Health Food Control Act, etc. in Taiwan, and patent holders should be allowed to claim punitive damages for willful infringement, so that the triple damages are restored to the Patent Act. Namely the court may take into consideration of the infringement conditions when deciding the damage reward upon request by the injured party, provided that such damage reward shall not exceed the triple amount of the proved damage.
