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The Draft Amendment to Taiwan’s Patent Law was passed by Taiwan’s Legislature on April 16, 2019. The Amended Patent Law will take effect from November 1, 2019.
The most significant changes are:
- Extension of the duration term of design patents
According to the Amended Patent Law, the duration term of a design patent will be extended from 12 years to 15 years after the Amended Patent Law takes effect. For a design patent which has not expired when the Amended Patent Law takes effect, its duration term will be automatically extended to 15 years.
- Relaxation of the time limit to file a divisional application after issuance of the notice of allowance
The applicant will be allowed to file a divisional application from an invention patent application or a utility model patent application within three months, in lieu of 30 days, from receipt of the Notice of Allowance (Table 1).
- Post-grant amendment to a utility model patent is subject to substantive examination but can be filed only at certain stages
According to the old Patent Law, a petition for post-grant amendment filed in the absence of an invalidation action was only subject to formality examination, and a utility model patent holder was allowed to file a petition for post-grant amendment “at any time”.
When conducting formality examination, the IP Office generally would deem a slight modification of the wordings in the recitation of the claims to be substantial change, not formality change. As such, it was quite difficult, if not impossible altogether, for a utility model patent holder to conduct a post-grant amendment after he had filed an infringement lawsuit and the accused infringer claimed a defence of patent invalidity before the court but did not file an invalidation action with the IP Office.
To tackle the problem at its roots, all post-grant amendments, according to the Amended Patent Law, shall be examined in a substantive manner but can be filed only at certain stages, namely:
(i) when an invalidation action has been filed against a utility model patent and is still pending;
(ii) when a request for obtaining a technical evaluation report on a utility model patent has been filed but the IP Office has not yet issued the evaluation report; or
(iii) when a patent infringement lawsuit filed on the basis of a utility model patent is pending in court (Table 2).
- Stringent time limit in invalidation proceedings
Under the old Patent Law, a supplementary invalidation brief, evidence, a counterstatement, and/or amendment of claims could be filed any time before the IP Office issues a decision, causing invalidation proceedings to drag on.
It is now stipulated in the Amended Patent Law that an invalidation petitioner must submit supplementary briefs and/or evidence within three months from the date the invalidation action is filed, or within one month from the receipt of any notification from the IP Office.
Filing amendment of claims in an invalidation action is also restricted. Under the amended law, the patentee can only do so before a deadline designated by the IP Office for submitting a counter-argument, with an exception given to amendment made due to a pending civil litigation, which can be filed at any time.
Tony Tung-Yang Chang is an attorney-at-law and patent agent at Saint Island International Patent & Law Offices. He can be contacted through the firm’s website www.saint-island.com.tw
Saint Island International Patent & Law Offices, patent law, utility model, post-grant amendment, IP office, invalidation, civil litigation, evidence
