On 18 January 2017, an amendment of the Patent Act with respect to the grace period for novelty and inventive step was promulgated through presidential decree. The Executive Yuan recently announced that the above-mentioned amendment will take effect on 1 May 2017, which will apply to new patent applications filed on or after 1 May 2017. To guide the implementation of the amended Patent Act provisions, the Enforcement Rules of the Patent Act were also amended, and, on 19 April 2017, the Ministry of Economic Affairs announced that the amended Enforcement Rule provisions will also take effect on 1 May 2017.

I.Patent Act Provisions Prior to Amendment

According to the Patent Act prior to amendment, when filing an invention patent application, a utility model patent application or a design patent application, the claimed invention, utility model or design must, among others, meet the novelty and inventiveness requirements set forth in Article 22 (applicable to invention or utility model applications) or Article 122 (applicable to design applications). Articles 22 & 122 of the Patent Act prior to amendment are as follows:

Article 22

An invention which is industrially applicable may be granted a patent upon application in accordance with this Act, provided that none of the following exists prior to the filing of the patent application:

1. the invention was disclosed in a printed publication;

2. the invention was publicly practiced; or

3. the invention was publicly known.

An invention that is without any of the circumstances prescribed in the preceding paragraph but can be easily made by a person with ordinary skill in the art to which it pertains based on the art shall not be patented.

Any of the following events shall not be deemed as the circumstance prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, which may preclude the grant of patent, provided that the concerned patent application is filed within six (6) months after the date of the event’s occurrence:

1. the invention was publicly used for experiment purposes;

2. the invention was published in a printed publication;

3. the invention was displayed at an exhibition sponsored or recognized by the Government; or

4. the invention was disclosure without the consent of the applicant.

An applicant claiming any of the exception prescribed in Items 1 - 3 of the preceding paragraph shall state in the patent application the fact involved and the date of its occurrence at the time of patent filing and submit evidentiary document(s) within a time limit designated by the Patent Authority.

Article 122

A design that is industrially applicable may be granted a patent upon application in accordance with this Act, provided that none of the following exists prior to the filing of the patent application:

1. an identical or similar design was disclosed in a printed publication;

2. an identical or similar was publicly practiced; or

3. the design was publicly known.

A design that is without any of the circumstances prescribed in the preceding paragraph but can be easily made by a person with ordinary skill in the art to which it pertains based on the art shall not be patented.

Any of the following events shall not be deemed as the circumstance prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, which may preclude the grant of patent, provided that the concerned patent application is filed within six (6) months after the date of the event’s occurrence:

1. the design was published in a printed publication;

2. the design was displayed at an exhibition sponsored or recognized by the Government; or

3. the design was disclosure without the consent of the applicant.

An applicant claiming any of the exception prescribed in Items 1 - 2 of the preceding paragraph shall state in the patent application the fact involved and the date of its occurrence at the time of patent filing and submit evidentiary document(s) within a time limit designated by the Patent Authority.

II.Patent Act Provisions After Amendment

As advised above, the amendment of the Patent Act with respect to the grace period for novelty and inventive step will apply to new patent applications filed on or after 1 May 2017. The main points of the amendment are explained below:

1.The grace period for invention and utility model patent applications has been changed from 6 months to 12 months from the date of the event’s occurrence (Paragraph 3, Article 22)

According to the Patent Act prior to amendment, a grace period claim is allowed only when there exists a qualified public disclosure for experiment purposes (applicable to invention and utility model patent applications only), printing in a publication, display at an exhibition sponsored or recognized by the ROC government or an involuntary public disclosure against the will of the patent applicant. To claim the grace period, an ROC patent application must be filed within 6 months from the date of occurrence of any of the above-mentioned events. Otherwise, the grace period claim will not be allowed.

According to the amended Patent Act, the grace period for filing an invention or utility model patent application has been changed from 6 months to 12 months from the date of occurrence of the concerned event. As to design patent applications, the grace period remains unchanged, which is 6 months from the date of occurrence of the concerned event.

2.The special events to support a grace period claim have been expanded and, generally speaking, there is no limitation as to the categories of justified prior public disclosure. However, the laying open publication or patent grant publication of a patent case in the ROC or in a foreign country is NOT a justified ground for claiming the grace period because such patent publication originated from the intent of the patent applicant (Paragraph 3, Article 22 & Paragraph 3, Article 122)

According to the Patent Act prior to amendment, claiming the grace period shall be allowed only if the concerned prior public disclosure is one of the following events: (1) public use for experiment purposes (only applicable to invention and utility model patent applications); (2) disclosure in a printed publication, (3) display at an exhibition sponsored or recognized by the Government; or (4) public disclosure without the consent of the applicant.

Considering the needs by industries and academic organizations in their business activities and academic activities, prior to patent filing, patent applicants may publicly disclosure their inventions, utility models or designs. Therefore, taking the laws and practice in US, Japan and Korea into consideration, the amendment of the Patent Act was made to expand the categories of public disclosure based on which the grace period can be claimed. However, according to Paragraph 4 of Article 22 and Paragraph 4 of Article 122, where there exists a laying open patent publication or a patent grant publication of an ROC patent case or a foreign patent case, which originated from the intent of the patent applicant, such patent publication is NOT a justified event to claim grace period. Attention shall be paid to the following which has been included in the “legislation explanation” in the amendment bill:

(1) The so-called “public disclosure originated from the patent applicant’s intent” refers to that which was made because of the intent or act of the patent applicant. The above-mentioned public disclosure is not limited to that made by the patent applicant, and it covers the public disclosure made by the patent applicant (including the patent applicant and any prior-hand patent applicant) and the public disclosure consented by the patent applicant. To guide the implementation of the above, Articles 15 & 48 of the Enforcement Rules of the Patent Act prescribe as follows: “Where a patent applicant receives the right to apply for patent due to inheritance, assignment, employment or a fund-providing arrangement, if the concerned invention, utility model or design has been publicly disclosed before patent filing by the deceased, assignor, employee or the person hired in the fund-providing arrangement, grace period can be claimed based on such prior public disclosure.

(2) The so-called “public disclosure against the patent applicant’s intent” refers to that which has been made, although the patent applicant does not intend to disclose the concerned invention, utility model or design. Where the content of a patent application is misappropriated or stolen by another person, the publication of such content would be deemed as one against the patent applicant’s intent. If the public disclosure is made due to a misunderstanding or negligence, such public disclosure is also deemed as one against the patent applicant’s intent. For example, where a patent applicant understands that the party receiving the disclosed information is one under confidentiality obligation but such understanding is against the fact. Another example is as follows: where a patent applicant has no intent to make a public disclosure, but the public disclosure is made due to the mistake or negligence by the persons or agents hired by the applicant, such public disclosure is deemed as one against the intent of the patent applicant.

(3) Where the invention, utility model or design claimed by a patent applicant is also concluded in another patent application (hereinafter referred to as “Relevant Application”) filed in the ROC or another country, the laying open publication or the patent grant publication of the Relevant Application is caused by patent filing by the applicant. The above-mentioned patent publication serves the purposes for “avoiding other persons from duplicating research and development for the same subject matter and to inform the general public of the scope of claimed subject matter.” To compare the above-mentioned purposes for patent publication with the purpose for allowing the grace period claim (to avoid rejection of patent applications for novelty or inventive step grounds due to the exceptional public disclosures made prior to patent filing), both are different from each other in the acts being governed and the intended goals. Therefore, patent publication disclosure is not allowed to claim the grace period. However, where the patent publication is made due to mistake or negligence, such patent publication shall not be deemed as prior art. Also, if a third party became aware of the content of an invention owned by a patent applicant (directly or indirectly) and later filed a patent application without the applicant's authorization, the patent publication of such third party's patent application shall not be deemed as prior art.

3.The procedural requirement is relaxed so that a patent applicant is not required to declare a “claim for grace period” when filing a patent application.

According to the Patent Act prior to amendment, to claim the grace period, a patent applicant must, at the time of patent filing, make a declaration and state the fact of the concerned public disclosure as well as the year/month/date of the disclosure. The applicant must also submit evidentiary document(s) to prove the existence of the concerned disclosure. To avoid jeopardizing patent applicants’ rights and interest due to their negligence in claiming grace period and to enhance encouraging research and development of innovations as well as to ensure earlier circulation of innovations, through the amendment, the requirement for claiming the grace period at the time of patent filing has been deleted.

4.Limitation of Patent Right – Prior User Right

According to Item 3, Paragraph 2 of Article 59 of the Patent Act prior to amendment (applicable to invention and utility model patent applications), patent right shall not apply under any of the following situations:

“Where, prior to patent filing, practice of an invention has been made in the ROC or necessary preparation for such practice has been completed; however, if the invention has been known by the patent applicant for less than 6 months ago and the patent applicant has made a reservation as to its right to apply for and receive a patent for said invention, the above shall not apply.”

To protect patent applicants’ rights to claim the grace period, through the amendment, the “6-month period” as stated in Item 3, Paragraph 1, Article 59 has been changed to a “12-month period.” For design patent cases, the above-mentioned time period is clearly stated as “6-month period” in Article 142 of the amended Patent Act.

The amendment of the Patent Act as stated above will make the ROC patent system be closer to international patent practice, and it will better strengthen protection available to patent applicants. On 28 April 2017, the Taiwan Intellectual Property Office (TIPO) has announced the relevant Patent Examination Guidelines to guide review and decisions on grace period claims. Lee and Li will closely monitor the development of this new practice and keep our clients informed in due course. If you have any questions, please do not hesitate to contact us.