Taiwan Intellectual Property Office (TIPO) held annual public meetings on intellectual property matters during this late June to mid-July. Participants included IP practitioners, patent attorneys, applicants, and other members of the public. The meetings were for TIPO to report on-going IP work and future plans, as well as to discuss patent and trademark inquiries raised by attendees. Notably, TIPO proposed various issues in order to make a comprehensive amendment on the Taiwan Patent Act in the coming years, and welcomed the public to present opinions and comments before a proposed amendment of the Patent Act is made.
The above-mentioned proposed amendment issues include:
- Deleting the requirement of submission of claims for obtaining an effective filing date of an invention or utility model application, such that claims could be supplemented after filing a patent application; deleting the necessity of submission of design specification for obtaining a filing date of a design application.
- For an invention patent application which has been examined and is allowed before its 18-month laid open period in the Patent Gazette, its technical contents will be published, and also be laid-open to the public. However, for a rejected invention patent application, its disclosures at the time of filing said application will not be laid open to the public.
- If an applicant has unintentionally failed to request for a substantive examination within three years after filing an invention patent application, they may seek remedy to revive their right for filing said request for substantive examination within a specified period.
- If a Taiwan patent application was not filed within 12 months after filing a basic foreign application, it could still be filed within 2 months after said priority claiming period, by claiming the said foreign priority in Taiwan.
- It shall be expressly stipulated by the Patent Act rather than the Implementing Rules of Patent Act that a divisional application needs to be filed with the disclosed invention from the specification or drawings of its allowed parent application, and not from the claims of its allowed parent application.
- The due date for filing a divisional application will be revised from 30 days to 3 months upon receipt of a Notice of Allowance, after the examination of an invention patent application.
- For the correction of a granted utility model patent, formality examination may still be conducted, while a substantive examination will be conducted when an invalidation, technical report or civil suit is involved and pending with said patent.
- A petitioner can submit the invalidation reasons or exhibits within three months instead of one month after filing a petition for invalidation. However, TIPO will not examine or review these reasons or exhibits if they are submitted beyond said three-month period.
- Introducing a license system that is opened to the public after the patentee declares that they are willing to allow anyone to use their patent under certain conditions and in return for equitable remuneration or annual renewal fees due.
- Extending the current 12-year protection term of a design patent to 15 years from the filing date of said patent.
The other proposed amendment issues include: providing solutions for the entitled person to assert their right on the applicant who has no right to file a patent application; allowing anyone to reproduce or publicly transmit the documents of a patent after publication (the documents of patent publications are not protected by copyright Act, but under the prevailing Act, the aspect that anyone may review, transcribe, photograph, or photocopy the documents has overly narrowed the limit thereof); changing the permanent preservation of patent files to fixed-term storage, in order to solve the problem of insufficient storage space for patent files.
