First draft of amendments to Patent Act
Second draft of amendments to Patent Act
Comment
First draft of amendments to Patent Act
On 30 December 2020, the Taiwan Intellectual Property Office (TIPO) published draft amendments to certain articles of the Patent Act, introducing significant changes to the existing patent remedy system (for further details please see "Draft amendments to Patent Act introduce significant changes to patent remedy system"). The main amendments are summarised below:
- the establishment of a re-examination and dispute review committee (review committee) by the TIPO and the strengthening of the examination process (articles 66-1 to 66-7);
- the introduction of a re-examination system, handled by the review committee, into the patent application process, along with the abandonment of the original re-examination mechanism, handled by a TIPO officer, and the simplification of the appeal levels (articles 66-8 to 68-1);
- the introduction of a dispute review system into patent cancellation cases (articles 71 to 82), whereby a dispute over patent ownership is no longer a matter for filing a cancellation action; parties involved should instead seek a civil solution (articles 10, 59, 71, 119 and 141); and
- the handling of any lawsuits concerning patent re-examinations and/or disputes as civil rather than administrative proceedings (articles 91-1 to 91-10).
Second draft of amendments to Patent Act
On 22 June 2021, after deliberating on comments received from various parties, the TIPO released a second draft of amendments to certain articles of the Patent Act. The main amendments are summarised below.
Suspension of procedures for disputes over ownership of rights to apply for patents and patent rights
Where disputes arise concerning the ownership of the right to apply for a patent and the patent right, parties – after having sought remedies through civil dispute resolutions (eg, litigation, mediation and arbitration) – may apply for the suspension of examination, review and/or other procedures involved with right changes. In principle, the period for the suspension of procedures by the TIPO will be limited to one year (articles 10(2) to 10(4)).
Relaxation of timing for divisional applications
Pursuant to the current Patent Act, a request for division must be filed:
- before a re-examination decision on the original patent application is rendered; or
- within three months of the date on which an approval decision for the original patent application or re-examination is served.
The second draft of amendments (article 34(2)) adds that a request for division may be filed:
- within two months of the date on which a rejection decision for the original patent application has been served;
- before a re-examination rejection decision on the original patent application has been rendered; or
- within three months of the date on which an approval decision for the original patent application has been served.
This benefits patent applicants because it enables their strategic consideration of patent portfolios.
Addition of circumstances allowing provision of new reasons and evidence in patent dispute litigation
The second draft of amendments (article 91-7) explicitly specifies that for cancellation requests under article 71(1)(1) of the Patent Act, any reasons or evidence not provided by the cancellation requestor and/or any intervener in the TIPO review procedures may not be provided during patent dispute litigation except in the following circumstances:
- The provision of evidence was prevented due to the TIPO's contravention of laws or regulations.
- The facts are obvious to the court, or are known to the court in the course of performing its function, or the court will investigate the evidence ex officio.
If neither of these provisions apply, any new reason or evidence will be denied by the court.
The second draft of amendments aims to enhance the economic efficiency of litigation. Article 33 of the Intellectual Property Case Adjudication Act allows a cancellation requester to provide new evidence submitted on the same grounds for revoking a patent during litigation proceedings, which may serve as a chance for the patentee to file a post-grant amendment as a defence in litigation. However, any such post-grant amendment still depends on the TIPO's approval. Therefore, the TIPO may not examine any new evidence provided by the cancellation requester during the litigation when conducting cancellation proceedings, and the patentee is unable to take adequate defensive measures and/or file alternative post-grant amendments in response, resulting in delayed litigation and leaving the patentee's procedural interests poorly protected.
Aiming to promptly and effectively resolve disputes over private rights, the second draft of amendments primarily takes the particularity of patent cancellation cases into consideration and embody the spirit of article 447 of the Code of Civil Procedure in their adoption of a strict continuance system for second-instance proceedings. Thus, the amendments explicitly specify restrictions on the reasons or evidence provided by any cancellation requestors and/or interveners, since the remedial interests thereof involve the two parties concerned and are related to the distribution of litigation costs and the burden of proof to be borne jointly by both parties. Consequently, the cancellation requestors and/or interveners must bear any disadvantages of their failure to provide relevant evidence at the due time.
Explicit specification of methods of adjudging litigation
Since dispute litigation is a new type of litigation in the proposed amendments to the Patent Act, ways of adjudging such litigation cases are explicitly specified (article 91-9) in order to clarify relevant practices in the future and avoid subsequent disputes.
The court will adjudicate litigation cases as prescribed in article 91-6(1) as follows:
- Where the plaintiff's complaint is in contravention of laws, the court will dismiss it by a ruling.
- Where the plaintiff's complaint is meritless, the court will dismiss it by a judgment.
- Where the plaintiff's complaint is meritorious, the court will revoke the review decision made by the TIPO and determine the extent of the protection conferred by the patent through a judgment.
- Where the plaintiff's complaint is meritorious but subject to a dismissal decision by the TIPO in accordance with article 66-7, the court will revoke the original decision and revert it to the TIPO for review.
The foregoing draft amendments are not yet finalised. Since the amendments proposed will have a far-reaching impact on the patent application and patent remedy system, patentees and relevant practitioners are advised to pay close attention to the changes to the Patent Act and relevant laws and regulations to keep abreast of the new system, lest their rights and interests be affected.
For further information on this topic please contact Hsiu-Ru Chien or Shih-I Wu at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected] or [email protected]). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.