Taiwan: Extensively Amended Patent Act Becomes Effective

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(Jan 03, 2013) On January 1, 2013, the Patent Act of the Republic of China (on Taiwan), which was promulgated on December 21, 2011, will come into force. The Taiwan Intellectual Property Office (TIPO) was quoted as saying that the revised law "will be more compliant with international standards, with more expansive protection for design patents and increased flexibility in application procedures." (Taiwan's Amended Patent Act Set to Take Effect, TAIWAN TODAY (Dec. 13, 2012).)

The new Act has 159 articles, of which 108 are revised provisions. Fifteen of the former 2010 law's 138 articles have been deleted, and 36 new articles were added. In addition, eight related regulations and five patent examination standards were adjusted to bring them into conformity with the amended law. (Id.; Patent Act 2011 [in Chinese and in English translation], Taiwan Intellectual Property Office website (last visited Dec. 26, 2012); Patent Act, Aug. 25, 2010 [in Chinese], Law & Regulations Database of the Republic of China website.) Some highlights of the amended Act are as follows.

Applications:

  • permissibility of applying for a patent for an invention disclosed in a publication, if the submission is made within six months of the disclosure;
  • extension of grace period (before filing an application) to cover novelty and inventive step requirements for inventions and utility models (in addition to that accorded to the creativeness requirement for designs);
  • limitability of applications in foreign languages to Arabic, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish, and when the application is filed with foreign-language specifications, claim(s), and/or drawings, no amendment of such documents will be permitted; and
  • removal of the inventor assignment requirement for patent applications filed on or after January 1, 2013.

Examination:

  • removal of the time limit for an applicant to request modifications to the invention description, claims, or drawing; and
  • addition of provisions on final notification and on correction of mistranslations.

Design patents:

  • expansion of scope of subject matter accorded design patent protection, to cover partial designs, computer-generated icons and graphic user interfaces, generative designs, and sets of related items; and
  • abolition of the "associated design patent" regime.

Biological material:

  • combination of the certificate of deposit and the viability test report into one document;
  • extension of deadline for submission of the certifying document, to within four months (vs. formerly three) from the filing date;
  • removal of the requirement to provide information about the deposit in the application form; and
  • inclusion of new provision on the reciprocal recognition of deposits made by foreign nationals.

Invalidation actions:

  • abolition of ex officio invalidation by the TIPO; invalidation proceedings to be handled by the "Specific Patent Agency" instead;
  • permissibility of filing an invalidation action against part of the claims covered by the patent (as opposed to the whole patent) when a patent includes two or more claims; and
  • requirement that the invalidation action filer submit a declaration of invalidation to determine the action's scope, and the claims set forth in the declaration may not be changed or added to after the declaration is filed.

Infringement:

  • requirement of intent or negligence in the infringement of a patent before damages may be claimed;
  • internationally accepted doctrine of patent exhaustion adopted in the related regulations.

Compulsory licensing:

  • applicability in response to national emergency or other circumstances of extreme urgency, where the patented invention is exploited non-commercially to enhance the public interest, etc.; and
  • addition of new provisions on compulsory licensing in order to help countries with insufficient or no manufacturing capabilities in the pharmaceutical sector to obtain pharmaceuticals needed to treat HIV/AIDS, tuberculosis, malaria, and other epidemics.

(Taiwan's Amended Patent Act Set to Take Effect, supra; Essence of the New Taiwan Patent Law -- Key Issues Only! to Come into Force on 1 January 2013, Taiwan International Patent & Law Office (Dec. 18, 2012), http://www.tiplo.com.tw/pdf/1e-PatentLaw2013.pdf.

In addition, although the grounds for extinguishment of a patent under the amended Act are essentially unchanged from the previous Act, the amended Act includes a new provision with reference to remedies for extinguishment of the patent right due to a patentee's failure to pay a patent annuity within the stipulated time limit. Article 70, paragraph 2, of the amended Act adds a new monetary charge and a publication requirement, stipulating:

Where the applicant unintentionally failed to pay a patent annuity within the late payment time set forth in Paragraph 1 of Article 94 [six months, versus 30 days in the 2010 Act, from the original due date, but with a "specified percentage addition" not set forth in the 2010 Act], the patentee may apply for reinstatement of the patent rights within one year from the due date for effecting the payment by paying triple the amount originally due, and the Specific Patent Agency shall publish with respect to the above. (Patent Act 2011, supra; Patent Act, Aug. 25, 2010, supra.)

Adjustment of Fees

The government has also adjusted patent-related fees, to be applied as of January 1, 2013. The basic re-examination request fee (for inventions) will be NT$7,000 (about US$241), with an additional fee of NT$800 (about US$28) imposed for each claim in excess of ten claims. Previously, there was an NT$8,000 charge regardless of the number of claims. The technical appraisal request fee (for utility models) will be NT$5,000, with an additional fee of NT$600 charged for each claim in excess of ten claims. The previous fee was a fixed NT$5,000 charge. (Notice on Vital Taiwan Patent Law Changes as of January 1, 2013!, Taiwan International Patent & Law Office (Dec. 18, 2012).)

The fees for filing a petition for an invalidation action (for inventions and utility models) is a basic NT$5,000, plus NT$800 for each claim to be invalidated. Formerly, there was a fixed fee of NT$10,000 for invalidation petitions related to inventions and of NT$9,000 for those regarding utility models. (Id.)

Taiwan Patent Statistics

In the first quarter of 2012, TIPO received 19,397 patent filings, a 2.6% increase over the first quarter of 2011 (18,905), with 11,595 applications filed by ROC nationals and 7,802 filings by foreigners (for the latter, more than a 5% increase over the previous year). Among the filings, invention patent applications totaled 11,596, of which 4,859 were filed by ROC nationals and 6,737 by foreigners. Japan ranked first among the top five invention patent filing foreign countries, as it has done for several years in a row. The United States continues to rank second, but the number of filings has slightly decreased for the past five years. In the first quarter of 2012, mainland China filed 284 patents in Taiwan, "a significant growth of 144.83% over the same period of last year." (Taiwan Patent & Trademark Law Office, IPR Trends Q1 2012: Patent and Trademark Statistics, TAIWAN IP NEWS (May 11, 2012).)

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Last updated: 01/03/2013