Amendments to the Patent Act are promulgated on May 1 by the President Order, and the date of implementation will be determined by the Executive Yuan
2019/05/21 TaiwanDate Posted：2019-05-21
Amendments to the Patent Act are promulgated on May 1 by the President Order, and the date of implementation will be determined by the Executive Yuan
The draft amendments to the Patent Act, based on changes of global trends and to make patent examination practices more robust, were passed by the Legislative Yuan on April 16.
A total of 17 articles were included in the amendments. The major points are as follows:
1. Extend the scope and period of patent applications division after approval decisions
Currently, division is only applicable to invention patent applications within 30 days after written decision of allowance is served. After amendments, 3 months instead of 30 days will be allowed. The same time rule applies to a reexamination application. This rule of division will also become applicable to utility model patent applications.
2. Enhance examination effectiveness of invalidation
In order to keep the parties involved from repeatedly proposing new reasons, evidence, or post-grant amendments during the invalidation proceedings, thereby prolong the examination process, the person initiates invalidation action must submit reasons for such invalidation within three months. Late submission will not be considered. Also, during the examination, the time limits that a patentee may apply for post-grant amendments are stipulated.
3. The period for making a post-grant amendment application to utility model patent and the requirement of substantive examination
Since substantive examinations are not applied for utility model applications, to avoid the claim scope of such patents from being changed after post-grant amendment applications have been approved, thereby affecting a third party’s interests, the timing which a patentee can apply for a post-grant amendment has been revised. Also, substantive examination will be conducted from now on for utility model post-grant amendment application.
4. Term of design patent is extended from 12 years to 15 years
Since the term of design patent in the Hague Agreement is 15 years, we extend the term of design patent in Taiwan to 15 years from the current 12 years, so as to enhance protection and to help the design industry to grow.
5. Resolve lack of storage space for patent documents
The current regulations stipulate that the patent documents must be preserved permanently. Now, more than 2.1 million cases are there. This makes it highly challenging in expanding storage space. Taking reference from other IP offices’ regulations, decision has been made to preserve patent documents according to their categories and on a periodical basis. The ones not worth preservation may be destroyed periodically. This shall ease the problem of lack of space.
TIPO hopes to loosen the current regulations through the amendments. This shall help to improve patent examination efficacy, benefit corporate patent portfolios, and promote industrial design development in Taiwan.
For more information (Chinese), please click the following link: https://www.tipo.gov.tw/dl.asp?fileName=941611175146.pdf
Intellectual Property Office Ministry of Economic Affairs, R.O.C.
