Major amendments to the Patent Law have passed its 3rd reading at the Legislative Yuan and the President of the Republic of China (Taiwan) promulgated the same on February 6, 2003. Since the amendments will introduce significant changes to the existing patent law and practice, the Government has thus decided that the revised Patent Law will become effective a year later, and the exact date will be finally decided by the Executive Yuan (the Cabinet).
Among the many changes which the revised Patent Law will bring into force, a few are listed below for your reference:
- Patent Opposition System Repealed According to the prevailing Patent Law, any person may lodge an opposition to a published patent application within three months after the publication of a patent application. However, the amended law will abolish this opposition procedure, and instead, to contest against any patents in the future, one may have to file an invalidation trial at any time after a patent is granted a Letters Patent.
- No Substantive Examination on Utility Model Patent Application Currently Taiwan is the only country in the world which still conducts a substantive examination on a utility model patent application. When the revised law comes into effect, the Taiwan Intellectual Property Office (TIPO) will only conduct a formality examination on the utility model patent applications. Under such circumstances when a utility model patentee would like to enforce his right in the future, it has to apply for a Technical Report from the TIPO.
- Abolishment of Criminal Penalty against Utility Model or Design Infringement As a result of the revision, only civil action may be initiated against an infringer in cases of patent (including invention, utility model or design) infringement.
- Priority Examination On Invalidation Trial When Infringement Action Is Involved Should an invalidation trial involve infringement action in the future, TIPO may in the best interest of the patentee, conduct a priority examination on an invalidation trial against a patent in accordance with the revised law.
- Extended Term To File A Request For Patent Re-examination According to the current Patent Law, an Applicant must file a request for re-examination with the TIPO within 30 days after the service of a decision rejecting its patent application. In the past, this 30 days term received much criticism from foreign applicants, and thus the Taiwan authority in the revised law, will extend the time limit to 60 days for filing a request for re-examination, and an Applicant may have a three months period (from date of filing the re-examination) to submit its statement of reasons for re-examination.
- Reduction or Exemption on Official Patent Annuities In the revised Patent Law, a provision is provided to reduce or exempt patent annuities for those patentees who are natural persons, schools, or small or medium enterprises. As the promulgated revised Patent Law calls for major changes to the structure of patent system in Taiwan, it may be necessary to amend a number of relevant rules and orders as well.
Accordingly, the Executive Yuan will decide when the revised law will come into force after ensuring all adjustments have been made. IMPORTANT NOTES FOR FOREIGN ASSOCIATES AND APPLICANTS 1.As explained in the above #2, the substantive examination system on a utility model application will be repealed once the revised law comes into effect. Thus for all pending utility model patent applications, referring to those applications where a decision has not yet been rendered to allow or reject before the enforcement date, the amended Patent Law shall apply; or in other words, the non-substantive examination system shall apply to those “pending” utility model patent applications. Furthermore, the duration of a utility model patent shall be ten years, instead of 12 years, from the application date in accordance with the revised patent law. 2.The draft to amend the Trademark Law is now pending as a priority bill at the Legislative Yuan to be deliberated. If the amendments to the Trademark Law are passed, which is anticipated to be around mid-2003, one which may affect registrants greatly will be the abolishment of substantive examination on trademark renewals.
