Taiwan IPO Announces Second Draft Amendment to the Taiwan Patent Act

Date: 15 July 2021

As previously covered in Wisdom News Volume 35, the Taiwan Intellectual Property Office (IPO) announced a draft amendment to the Taiwan Patent Act on 30 December, 2020. On 22 June, 2021, after holding a public hearing and receiving opinions from practitioners and the public alike, the IPO announced the second draft amendment to the Taiwan Patent Act featuring the following revisions:

  1. Allowing more flexibility for divisional application:

    Article 34 of the second draft amendment provides that a request for division may be filed within any of the following time periods:

    (1) before an examination decision on the original patent application is rendered;

    (2) within 3 months after the date on which an approval decision for the original patent application is served;

    (3) within 2 months after the date on which a rejection decision for the original patent application is served (new addition in the second draft);

    (4) before a reexamination decision on the original patent application is rendered (new addition in the second draft);

    (5) within 3 months after the date on which an approval decision for the original patent application is served (new addition in the second draft).

    The second draft amendment to the Taiwan Patent Act allows for more flexible times to request division of an application, including within 2 months after a rejection decision is served, before a reexamination decision is rendered, and within 3 months after an approval decision is served, as shown in the graph below:

    ● Application approved at examination:

    (A) Before an examination decision on the original patent application is rendered

    (B) Within 3 months after the date on which an approval decision for the original patent application is served

    ● Application rejected at examination, and approved at reexamination:

    (A) Before an examination decision on the original patent application is rendered

    (B) Within 2 months after the date on which a rejection decision for the original patent application is served

    (C) Before a reexamination decision on the original patent application is rendered

    (D) Within 3 months after the date on which an approval decision for the original patent application is served

    ● Application rejected both in examination and reexamination:

    (A) Before an examination decision on the original patent application is rendered

    (B) Within 2 months after the date on which a rejection decision for the original patent application is served

    (C) Before a reexamination decision on the original patent application is rendered

  2. Including civil remedy procedures for patent ownership disputes:

    The first draft amendment removed the regulation in Paragraph 1, Article 71 of the current Patent Act allowing invalidation to be filed on the grounds of usurpation (without consent of the rightful owner), and provided that the parties involved shall resort to civil litigation for disputes on patent ownership. The parties could later present documents such as final court decisions to require change of ownership from the IPO.

    In Article 10 of the second draft amendment, civil remedy procedures are introduced:

    (1) Where dispute on patent ownership occur, and if a suit has been filed or mediation or arbitration is ongoing, the parties may present documents and request that the IPO suspend examination or relevant procedures (including assignment, licensing, etc.)

    (2) The IPO shall suspend the procedure for one year within the request is made. Once the ground for suspension terminates, the procedure shall continue according to the application.

    (3) The parties may present evidence and request an extension on the period of suspension one month prior to the suspension expires, but each extension shall not exceed one year.

  3. Introducing exceptionally allowed grounds for producing new evidence in patent dispute litigation:

    According to Article 33 of the current Taiwan Intellectual Property Case Adjudication Act, the Intellectual Property Court (IP Court) shall take into account any new evidence submitted on the same grounds for an invalidation prior to the end of the oral argument. This may, however, result in the IP Court’s inability to sufficiently process and examine all evidence. The first draft amendment stipulates that grounds and evidence not produced during IPO trials may not be produced at litigation. (Article 91-7)

    The second draft, on the other hand, introduces exceptional circumstances in which new evidence may be presented:

    (1) The evidence is unable to be presented due to the IPO acting against the law.

    (2) The facts are generally known or known to the court in the course of performing its function, or if the court shall conduct investigation ex officio. (Article 91-7 of the draft amendment)

  4. Making clear how dispute cases should be adjudicated:

    The first draft amendment provides that the plaintiff and defendant in remedy procedures for patent rights disputes shall be the actual parties involved, and the following proceedings shall take the form of civil litigation. (Article 91-9) The second draft further clarifies how such dispute cases should be adjudicated, where if the plaintiff’s complaint has merit, the court shall revoke the trial decision made by the IPO and determine the scope of the patent by adjudication.

The amendment proposed involves a wide range of changes, and Wisdom will continue to pay close attention to any developments and offer the latest updates.

 

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