To gain ground on its aspiration for entry into the Trans-PacificPartnership (TPP), it is necessary for Taiwan to ensure that its Patent Act meets the TPP requirements. On 10 May 2016, in accordance with the resolutions reached at the TPP/RCEP Special Working Group, the Intellectual Property Office (IPO) submitted to the Executive Yuan a TPP-related Patent Act amendment proposal (hereinafter referred to as “draft Amendment”), which has been included among the transferred work items for consideration by the new government. The major contents of the TPP-related Patent Act amendment proposal are as follows:
I. Expansion of “Grace Period”
To encourage exploitation, the draft Amendment proposes to extend the 6-month grace period to 12 months and further relax the “public disclosure” requirements for applying the grace period (Article 22 & Article 122 of the draft Amendment). Details are as follows:
A. Invention and New Utility Model Patents
Article 22 of the Patent Act currently in effect states the following:
An invention which is industrially applicable may be granted a patent upon application in accordance with this Act provided that the invention is free from any of the following:
- Prior to application for patent, the invention has been disclosed in a publication(s);
- Prior to application for patent, the invention has been publicly practiced; or
- Prior to application for patent, the invention has become publicly known.
Where an invention can be easily made by personsordinarily skilled in the art based on technology prior to patent filing, a patent shall not be granted for such invention notwithstanding that none of the events prescribed in the preceding paragraph exists.
Any of the following events shall not be deemed as one prescribed in Paragraph 1 or the preceding paragraph of this Article, which may preclude the grant of an invention patent,provided that the concerned patent application is filed within six (6) months from thedate of the event's occurrence:
- Where the invention concerned has been publicly disclosed as a result of experiment;
- Where the invention has been disclosed via printed publication;
- Where the invention has been displayed at an exhibition sponsored or recognized by the government; or
- Where the invention has been disclosed against the will of the patent applicant.
An applicant claiming exemptionas set forth in Item 1 through Item 3 of the precedingparagraph shall state the factand the relevant date in thepatent application at the time of filing and submit evidentiary documents within the time limit specified by the Patent Authority.
In the draft Amendment, the major content of Article 22 is as follows:
- The grace period is extended from 6 months to 12 months.
- Original Items 1-3, Paragraph 3 are deleted, Item 1 is added, and the wording of original Item 4 is changed, and has become Item 3. After amendment, the major content of Items 3 & 4 are as follows:
“ Any of the following events shall not be deemed as one prescribed in Paragraph 1 or the preceding paragraph of this Article, which may preclude the grant of an invention patent, provided that the concerned patent application is filed within twelve (12) months from the date of the event's occurrence:
- Where the invention is publicly disclosed based on the intent of the patent applicant;
- Where the invention is publicly disclosed against the patent applicant’s will
The exception stated in Item 1 above shall not apply to publication in patent gazettes in the ROC or other countries."
B. Design Patent
According to Article 122 of the draft Amendment, the grace period for design patent applications is still 6 months (no amendment is made). However, other changes made in Article 22 also applies to design patents (as stated in Article 122 of the draft Amendment)
II. Prior Use Right
To comply with the extension of the “grace period” from 6 months to 12 months in Article 22 of the draft Amendment, the relevant provision regarding the prior user right (as stated in Articles 59 and 142 of the draft Amendment) has been simultaneously amended to indicate that a patent applicant may not file a patent application during the 12-month grace period.
According to Item 3, Paragraph 1, Article 59 of the current Patent Act, an invention patent right shall not extend to the following ("prior user right"):
“Where, prior to application for patent, the invention has been practiced in this country, or where all necessary preparations have been completed for such purpose; provided; however, the above "prior user right" shal not apply if it has been more than 6 months from the dte of becoming aware of the invention from the patent aplicant and if the patent applicant has made a statement regarding its patent right"
To ensure a patent applicant’s right and interest with respect to “grace period” as stated in Paragraph 3, Article 22 of the Patent Act (please refer to Item I above), the “time period with respect to prior user right” as stated in Article 59 of the Patent Act has been changed to “12 months.” Article 59 of the draft Amendment applies to invention patents and new utility model patents. According to Article 142 of the draft Amendment, the time period with respect to prior user right for design patents is still “six months.”
III. Extension of Patent Term Due to Delay in Patent Examination
To compensate for delay in patent examination by the Patent Authorities and to protect a patent owner’s right and interest, the draft Amendment provides a basis for calculating such delay in patent examination, the time period allowable for deduction, application time period, handling of differences between the extension period applied for by a patent owner and the one decided by the IPO, grounds and procedure for filing cancellation actions against patent term extension decisions, etc. (Articles 57-1 through 57-4).
According to Article 18 of the TPP, where there is any unreasonable delay in patent examination, a TPP contracting state must, upon request by a patent owner, adjust the term of patent so as to make up the delay. Articles 57-1 through 57-4 are included in the draft Amendment to govern patent term extension matters. The major content of the amendments is as follows:
- Where the publication date of an invention patent application has been more than 5 years from the filing date or 3 years from the date of applying for substantive examination, whichever is later, the patent owner may apply extension of patent term so as to make up for the delay in examination. The above-mentioned extension period shall have deducted therefrom the time period that is not attributable to the IPO and the time period that is attributable to the patent owner. The extension shall not exceed 5 years.
- An application for patent term extension shall be filed within 3 months from the date of publication of the concerned invention patent application.
- For an application for patent term extension, if the extended patent term calculated by the IPO exceeds the term applied for by the patent owner, the extended term calculated by the IPO shall apply. If the extended patent term calculated by the IPO is shorter than the term applied for by the patent owner, the IPO shall ask the patent owner to file a response within a specified time period. If no response is timely filed, the extended term calculated by the IPO shall apply.
- With respect to a patent term extension granted by the IPO, any person may file a cancellation action with the IPO against the patent term extension under any of the following situations:
- Where the extended term exceeds the term that is eligible for extension according to the Patent Act; and
- Where the applicant of the patent term extension application is not the patent owner.
If a patent term extension is irrevocably revoked through cancellation, the originally granted patent term extension is considered non-existing from the beginning. However, where an extended term exceeds the term that is eligible for extension according to the Patent Act, and the grant of the above-mentioned patent term extension is irrevocably revoked through cancellation, the term exceeding the eligible term is considered non-existing.
IV. Enforcement Actions in Respect of Patent Linkage
With respect to filing an application for generic drug approval with a declaration that the commercialization of the generic drug will not infringe on any new drug or a statement that the concerned new drug patent is invalid, the draft Amendment states that the owner of the new drug patent may file patent infringement litigation during the application for approval of the generic drug. If no such litigation is filed, the applicant filing the application for approval of the generic drug may also file a suit to declare non-infringement (Article 60-1 of the draft Amendment). The major content of Article 60-1 is as follows:
Where there is an application for approval of a drug with a statement prescribed in Item XX, Article XX of the Act of Pharmaceutical Affairs, after the patent owner receives a notification, it may take legal actions to seek removal of infringement or prevention of threatened infringement pursuant to Paragraph 1, Article 96 of the Patent Act.
V. Transitional Provision
Since it is directed to compliance with the TPP, the draft Amendment states that the amendments apply to patent applications filed after the amended Patent Act takes effect. However, Article 60-1 of the draft Amendment shall take effect at the same time when the amended Patent Act is in implementation (Article 157-1 of the draft Amendment).
The draft Amendment relates to future financial and economic policies and directions, and will be reviewed for determination by the new government in Taiwan inaugurated on 20 May 2016. The draft Amendment is not a final proposal and may be subject to future changes. We will monitor further devekopment and timely reports for our readers' reference.