Date: 20 January, 2021

【Volume 35】

The Taiwan Intellectual Property Office (Taiwan IPO) has announced a draft amendment to the Taiwan Patent Act on 30 December, 2020¹, amending a total of 73 articles. Significant changes are made to the trial and appeal system for patent applications and the invalidation procedures, among others. The Taiwan IPO is currently requesting comments from the public and held a public hearing on 19 January 2021. Below is a brief summary of the key amendments:

1. Introducing the Patent Trial and Appeal Board (PTAB)

Under the current Patent Act, applications receiving a rejection after reexamination and invalidation cases are handled by a dedicated team of experienced examiners (Patent Division III) in the Taiwan IPO, with the examination mostly conducted in written form and complemented by interviews when necessary. With reference to the patent trial and appeal practices in Japan, U.S., and Korea, the amendment introduces a new Patent Trial and Appeal Board (PTAB) within the Taiwan IPO to independently handle patent trial and appeal cases. (Articles 66-1 to 66-7 of the draft amendment)

2. Replacing Reexamination and the Petitions and Appeals Committee with Review by the PTAB

In current patent practice, a reexamination request must be filed with the Taiwan IPO if one seeks remedy after receiving rejection in the patent application examination stage. The new law abandons reexamination system, and requires applicants to file for “review” which will be handled by the new PTAB. The application will then be reviewed by a panel of multiple reviewers. New measures such as reconsideration by the examiner before appeal and oral reviews are also introduced. (Articles 66-8 to 83 of the draft amendment)

Applicants are no longer required to appeal to the Petitions and Appeals Committee if met with unsatisfying results from the review, but shall resort to direct appeals to the Intellectual Property and Commercial Court. (Articles 91-1 to 91-10 of the draft amendment)

3. Amending Invalidation-Related Provisions

Key amendments to invalidation-related provisions include:

a. Evidence for invalidation shall no longer be submitted within three months of filing, but shall be submitted during an appropriate period before the review closes. (Articles 73 and 74 of the draft amendment)

b. Reviews are conducted mostly in oral form. (Articles 74-1 of the draft amendment)

c. Ex officio “preliminary procedures” and evidence investigations are introduced. (Articles 73-3 to 77 of the draft amendment)

4. Restructuring Invalidation Proceedings

Under the present law, one should seek remedy by appealing to the Petitions and Appeals Committee if met with undesirable invalidation decisions issued by the Taiwan IPO. The defendant in such cases would be the Taiwan IPO, and the invalidation petitioner or patentee attend as participants.

The draft amendment abandons such procedures, allowing direct appeals to the Intellectual Property and Commercial Court. Defendants shall be either the patentee or the invalidation petitioner. Moreover, the whole procedure will take the route of civil litigation, and the Supreme Court will serve as the appellate court. (Articles 91-1 to 91-10 of the draft amendment)

5. Resolving Disputes on Patent Ownership through Civil Litigation

The new law removes the regulation allowing invalidation to be filed on the grounds of usurpation (without consent of the rightful owner). The parties involved shall now resort to civil litigation for disputes on patent ownership. (Article 35 of the draft amendment)

6. Extending the Grace Period of Design Patents to 12 Months

The proposed amendment extends the grace period of design patents to 12 months. (Article 122 of the draft amendment)

7. Prohibiting Divisional Application during Reviews

At present, it is possible to file divisional applications during the reexamination stage. However, the amendment replaces “reexamination” with “review,” which also precludes the possibility of divisional applications during this stage. Divisional applications must be filed before the examination decision is issued or within three months after the notice of allowance is received. (Article 34 of the draft amendment)