Taiwan jurisdiction report: Proposed patent law amendments

In mid-May 2018, a new draft bill of Taiwan’s Patent Law was published by the Taiwan Intellectual Property Office.

The primary amendments introduced into this draft bill are summarised below:

A grace period is allowed for claiming priority and requesting substantive examination.

According to the current Patent Law, priority can be claimed within 12 months for an invention or utility model application from the filing date, and a priority claim must be filed within six months from the filing date for a design application. The draft bill proposes a grace period of two months for claiming priority.

"The draft bill is now under public consultation before it is submitted to the Executive Yuan."

While a request for substantive examination must be filed within three years from the filing date, according to the current Patent Law, a grace period of two months is likewise proposed by the draft bill.

Relaxation of the time limit to file a divisional application

According to the current Patent Law, a divisional application can be filed any time prior to issuance of the Notice of Allowance or Second (Final) Office Action, or within 30 days from the date of receipt of the Notice of Allowance if the application is allowed without entering the re-examination stage.

The draft bill proposes that a divisional application can be filed within three months from receipt of the Notice of Allowance no matter whether the application is allowed during the preliminary examination or re-examination stage. This stipulation applies to not only invention, but also design applications.

Extension of the duration term of design patents

The duration term of a design patent will be extended from 12 years to 15 years according to the draft bill.

A time limit is set to file a supplementary invalidation brief, evidence, a counterstatement, and/or amendment of claims during invalidation proceedings.

Under the current Patent Law, a supplementary invalidation brief, evidence, a counterstatement, and/or amendment of claims can be filed any time before the Taiwan Intellectual Property Office (TIPO) issues a decision, causing invalidation proceedings to drag on. It is now proposed in the draft bill 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 TIPO.

Patentees filing counterstatements and/or amendment of claims may only do so before a deadline designated by the TIPO, with an exception given to amendment of claims containing only deletions, which can be filed at any time. 

Post-grant amendments for a utility model registration are subject to substantive examination and can be filed only at certain stages

Under the current Patent Law, after a utility model application matures into a registration, the registration holder may file a request for post-grant amendment “at any time.” The draft bill now proposes that a petition for post-grant amendment can be filed only at the following stages: (a) an invalidation action has been filed against the utility model registration and is pending; (b) a request to obtain a technical evaluation report on the utility model registration has been filed but the report has not yet been issued; and (c) a patent infringement suit based on the utility model registration is pending in court. However, all the post-grant amendments filed will be examined in a substantive manner. 

The draft bill is now under public consultation before it is submitted to the Executive Yuan (the executive branch of the government) for approval and the Parliament to pass as a Bill.

Fiona Yin and Ming-Yeh Lin are both patent attorneys at Saint Island Int’l Patent & Law Offices. They can be contacted through the firm’s website: http://www.saint-island.com.tw