In order to meet the international trends and join TPP (Trans-Pacific Partnership) protocol, Taiwan government has made great efforts including amendments on the prevailing Patent Act. Taiwan Intellectual Property Office (TIPO) therefore proposed draft for amendments and submitted the same to the Executive Yuan (Cabinet) in last May of 2016. The draft of Patent Act Amendments was then delivered to the Legislative Yuan for deliberation. These amendments are highlighted as follows:
- Relaxing the grace period for patent application of invention/ utility model from 6 to 12 months and its disclosure manner.
- Extension of the patent term for compensation on the patentee due to the unreasonable delay of examination by the patent authority.
- Introducing the patent linkage system between the license approval of generic drug and the patented drug.
However the multilateral deals of TPP protocol becomes unclear after the newly-elected US President Donald Trump signed executive orders on January 23, 2017 to withdraw US from TPP. Yet in order to avoid the development of TPP from influencing the enforcement of the above draft of amendments, and also to meet the demands from the domestic enterprises and academic institutions urging the government to relax the patent requirement of grace period on their inventions/utility models which may have disclosed in various manner and let them have ample time in preparation of filing the patent applications, TIPO, through the initiative of legislators at the Legislative Yuan, proposed a bill for the Patent Act amendments including Article 22, 59, 122, 142 and 157-1 on grace period for patent application of the above Item 1, and said bill was approved by the Legislative Yuan and promulgated by Taiwan government on January 18, 2017, in which the details are provided below:
- The grace period for a patent application of invention/utility model will be 12 months from its filing date of patent application (instead of the current 6 months which is still unchanged for a design patent application).
- It is not required to declare or make a claim on the grace period of disclosure at the same time when the applicant files a patent application for invention, utility model or design.
- The disclosure claim of patent requirement is applicable to any disclosure manner whether or not it is intentionally made by the applicant, such as experimental data, printed publication or exhibition, etc., except for those published in the Patent Gazette on the foreign patent applications as filed.
- The provisions of prior use right in connection with the grace period for a patent application of invention/utility model was also revised simultaneously, i.e. if a person involves with the prior use of an invention or a utility model before filing by a patent applicant, and said person is then aware of said invention/utility model from the patent applicant within 12 months, the patent applicant could reserve his right on the granted patent to pursue action against said person if necessary.
The above amendments on grace period for patent application will be enforced on the date to be determined by the Executive Yuan. Further, TIPO also pre-announced the revised Enforcement Rules of Patent Act on January 23, 2017 which will be enforced together with the revised Patent Act, and will accordingly revise the Patent Examination Guidelines as well. It is expected that these amendments on grace period for patent application will be enforced on May 1, 2017 if possible.
Although Taiwan government is keen to join TPP protocol by making the above amendments, the proposed bill for amendments of above 2 and 3 has not yet finalized its legislation. Since the future of TPP is unclear, the bill for such amendments will be held in abeyance.
