Date: 12 May, 2021

With the growing high-tech industry, Taiwan is rising to become a global technology and innovation powerhouse, and many foreign corporations are showing interests in applying for IP right protections in Taiwan.

The article “Significant Changes in Taiwan Patent Act and Strategies for Patent Applications in Taiwan” written by Director George J. H. Huang (Attorney at Law and Patent Attorney) was published in “Mitteilungen der deutschen Patentanwälte (Heft 5/2021)” in May 2021.

The publication “Mitteilungen der deutschen Patentanwälte”, which is edited by the German Chamber of Patent Attorneys (Patentanwaltskammer), is one of the leading journals in the field of industrial property law.

In this article, George explains the major changes to the new Taiwan Patent Act and examination guidelines implemented on 1 November 2019, which introduced many changes to the Taiwanese patent system, especially on invalidation, post-grant amendments and divisional patent applications. This article aims at providing strategies and advices for applicants who want to develop a strong patent portfolio in Taiwan.

Structural overview of the article

Part I: Considerable changes to the Taiwanese patent system

1. Limiting the time period for a party to submit responses, new reasons or evidences in an invalidation proceeding (New Patent Act Art. 73)
2. Limiting the time period for a party to apply for post-grant amendments in an invalidation proceeding (New Patent Act Art. 74)
   1. For Invention Patent
   2. For Utility Model Patent
3. Extending the scope and the period for filing divisional patent applications after receiving an approval decision (New Patent Act Art. 34 and 107)
4. The protection period of design patents is extended: the term of design patents has been increased from 12 years to 15 years

Part II: How to act under the new Taiwan Patent Act

1. Strategies for challenging the validity of patents by invalidation
2. Strategies for defense against invalidation and litigation
3. Strategies for filing a request for division of a patent application