Background
Main amendments
Comment
Background
On April 6 2011 the Economic Affairs Committee of the Legislative Yuan concluded its review of the Patent Act Amendment Bill. In order to conform to the Cross-Strait IP Rights Protection Cooperation Agreement, Articles 28 and 29 of the Patent Act were amended at an earlier stage (for further details please see "Taiwan and China sign IP agreement"). The bill contains proposed amendments related to the newly amended Articles 28 and 29, which the committee must review. With the exception of the abovementioned, the committee has passed all the other proposed amendments contained in the bill, which involves changes to 162 articles (amending 108 articles, adding 39 articles and deleting 15 articles).
The Intellectual Property Office (IPO) will coordinate with the Council of Agriculture of the Executive Yuan with respect to measures to implement changes relating to the topics that were under discussion during the Economic Affairs Committee's review process (eg, the scope of self-use for plant invention patents by farmers and agricultural technology policies).
It has been more than eight years since the Patent Act was amended in February 2003. If the Patent Act Amendment Bill (as passed by the Economic Affairs Committee) is passed by the Legislative Yuan, it will facilitate the development of local biotechnology, agriculture and cultural creativity industries, upgrade patent examination, strengthen patent protection and expedite Taiwan's interface with international society.
Main amendments
Major amendments passed by the Economic Affairs Committee are as follows:
- Patent protection will be granted to animal and plant per se inventions. New provisions will be introduced into the Patent Act regarding liability for self-use by farmers, the exhaustion of patent rights, cross licensing between owners of patent rights and plant seedling rights.
- Exception to the absolute novelty bar with a 6-month grace period will be expanded to "prior publication made by the patent applicant". In addition, events constituting exceptions to absolute novelty bar will also apply to inventive step requirement.
- Where a priority claim is not made at the time of patent filing by a patent applicant, or where a patent owner does not pay an annuity on time causing the patent right to extinguish, the patent applicant or owner will be entitled to revive the priority claim or patent right through a reinstatement procedure, provided that the default was not intentional.
- The timing restrictions for making amendments for invention patent applications will be removed. The "final notification" practice will be, for the first time, brought into the patent system, and, upon receipt of a final notification, a patent applicant will have the last chance to effect patent amendment and the amendment thus made will be limited to the conditions set forth in the new Patent Act.
- A new amendment procedure to deal with amendments of translation errors will be brought into the patent system. Where there is a translation error in the patent specification and claims, a patent applicant will apply for amendment of such error. Such amendment will not exceed the disclosure scope of the foreign-language patent specification and drawings, and it will not cause substantive change to the original disclosure.
- A patent applicant will be allowed to effect a patent division of its invention application provided that it is made no later than 30 days from the date of receiving an allowance decision issued at the first examination stage.
- Regarding the "patent term extension"for pharmaceutical-related and agrichemical-related patents, the original timing requirement (ie, the time spent in obtaining a marketing permit exceeds one year from the patent publication date) will be abolished. Amendments will be made with respect to limitations on patent rights so that a non-public action for non-commercial purpose, or an action needed to obtain a local or foreign drug permit, will not be deemed as patent infringement; amendment will be made to recognise international patent right exhaustion.
- Amendments will be made with respect to compulsory patent licensing practice as well as the process of determining compensation for compulsory patent licensing. Practice regarding patent cancellation (invalidation) actions will be amended. Major changes include the following:
- revocation actions initiated by the Intellectual Property Office will be abolished;
- filing cancellation actions against partial claims will be permitted;
- multiple cancellations against the same patents may be examined and decided in a consolidate manner;
- a decision on a cancellation case will be issued on claim-by-claim basis; and
- patent examiners may introduce into a cancellation case new cancellation reason and/or new evidence.
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- Amendments will be made with respect to the subjective factors for patent infringement (neither intent nor negligence is needed for seeking an injunction relief, whereas intent or negligence is needed for seeking a damage claim), the calculation of damages claims (royalty reference will be used as one of the ways for calculating damage claim) and patent marking requirement (when marking on the patented product is not possible, such marking can be made on the concerned label or packing, or made in other precise manner which can draw other parties' attention).
- Amendments will be made to utility model patent practice so as to allow the dual patent filing (ie, when the same applicant files an invention patent application and a utility model patent application for the same invention on the same day), whereas the patent applicant must later effect a selection between the two patent applications to overcome avoid double patenting issue.
- Patent protection will be granted to particle designs, icon designs, graphical user interface signs as well as designs applied to articles in set. Associated new design patent practice will be abolished and derivative design patent right practice will be brought into the patent system.
Comment
Regarding the proposed amendment for expanding patent protection to plant and animal per se inventions, comments and different opinions have been recently raised to the IPO and the Legislative Yuan, and discussions are ongoing. This may cause a delay in passing the amendment.
The amendment states that the Executive Yuan will announce the implementation date of the new act. If the amendment is passed, considering the significant changes to the Taiwanese patent practice, the IPO will draft the relevant implementation rules and guidelines (such as amendments to the enforcement rules, patent examination guidelines, application forms), as well as adjust its new standard operating procedures and computer system for use in implementing the new act. It is understood that the new act may take effect around one year from the date on which the amendment is passed.
For further information on this topic please contact Daisy Wang at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300), fax (+886 2 2713 3966) or email ([email protected]).