In order to meet the development in technology and to bring the patent system into harmony with the international practices, the Taiwan Intellectual Property Office conducted a comprehensive review on the Patent Act years ago. As a result, amendments covering a total of 159 articles were proposed and they were finally passed by the Legislative Yuan in November 2011.
Then the President Order on December 21, 2011 approved the revised provisions. Recently, the Executive Yuan (Cabinet) has decided that the revised Patent Act will be promulgated on January 1, 2013. Major revisions in the Patent Act are highlighted as follows:
- An applicant may claim a 6-month grace period for the disclosure of his invention in publication, and said grace period will apply to both the novelty and inventive step requirements.
- An applicant may file a petition to restore his rights if he has unintentionally failed to claim foreign priority or to pay the annuity fee of his patent. Per the prevailing Patent Act, restoration of patent rights would only be available to those which encountered delays in statutory deadline caused by natural calamities or causes not attributable to the applicant.
- Certified priority document may be filed within 16 months from the earliest priority date, instead of the current 4-month deadline from the filing date of patent application in Taiwan.
- Submission of assignment for a patent application filed by an applicant other than the inventor is repealed.
- Deposit information of biological material at the time of filing a patent application is no longer required, and the applicant may simply state the deposit information and submit the deposit certificate within 4 months after the filing of patent application or 16 months from the first priority date. Further, deposit of biological material in Taiwan may be exempted if the same deposit has been made in a foreign depository on the basis of mutual recognition.
- Abstract and claims are to be separated from the patent specification, and the placement of section titles and paragraph numbers are to be included in the patent specification (in similar format according to the Common Application Format as required by the Trilateral Offices of USPTO, EPO and JPO).
- Specification in foreign language can be used to obtain a filing date of patent application in Taiwan; thereafter, no amendment in said foreign language text will be allowed. Instead, if amendment of the patent specification is needed, only amendment in the translated Chinese text will be allowed. Also, corrections to translation errors can be filed.
- Time restrictions for making voluntary amendment is relaxed so that an applicant can file at any time a voluntary amendment during the prosecution; however, if a final notice of official action is rendered, then the content of the amendment shall be made within the designated term and such amendment shall be restricted to be within the specific matter as requested by the Examiner.
- The protection of design patent has been expanded to cover a partial design, computer-generated icons and graphical user interfaces, and sets of articles while the associated design system shall be abolished. Also, derivative design system shall be introduced when the same applicant files to protect several similar designs.
- Divisional application can still be filed within 30 days upon receipt of the Notice of Allowance for a patent application during the primary examination stage (but not after the Decision on Re-examination was rendered).
The revised Patent Act which is soon to come into effect, will also include amending provisions related to invalidation (cancellation against granted patents), patent term extension (for pharmaceuticals and agricultural chemicals), compulsory licensing, patent infringement, patent marking, etc. For details or inquiries, please feel free to contact us.
