The Taiwan Intellectual Property Office (TIPO) has announced that the effective date of the Amendment to Taiwan Patent Act will fall on January 1, 2013. For better transition and in anticipation of the implementation of the new law, we summarize the important changes with respect to various topics as outlined below.

Six-month Grace Period

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Non-patentable subject matter

Diagnostic, therapeutic and surgical methods for the treatment of humans or animals are all non-patentable.(n1)

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Patentable subject matter for design patents

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Filing documents

  1. No Assignment of Application Rights is required.
  2. Foreign languages are not unlimited when used as a foreign text to obtain a filing date.(n1)

(n1) Only ten languages may be used for this purpose as follows: Chinese, English, Japanese, Korean, French, German, Arabic, Portuguese, Russian and Spanish.

Deposit of biological material

  1. Time frame to submit a certificate of deposit is 4 months from the filing date of the application, or 16 months from the priority date claimed.
  2. Domestic deposit may be exempted if a deposit has been made in a foreign depository recognized by Taiwan.

Claim of Priority

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Dual application system

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Division of Application

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Amendment during examination

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Issuance of Final Office Action A Final Office Action system is introduced in the new Patent Act to expedite patent examination. A Final Office Action will require the applicant to make amendments under some limited scope only and within a specific time limit. A Final Office Action will not be issued for every application. The following situations will trigger a Final Office Action:  

  1. New issues as a result of a response or amendment to a non-final Office Action.
  2. For parent and divisional applications, reasons as stated in an Office Action for the parent application are the same as those stated for the divisional application, and vice versa.

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Correction of Translation Errors

When an application is filed in a foreign language, examination of the application will still be based on its translated Chinese specification.

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Restoration of Rights

Failure to make payments for patent grant or annuities will result in the extinguishment of patent rights. Under the new law, restoration of rights is possible when there has been an unintentional failure to make such payments.

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Amendments after grant

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Invalidation Proceedings

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Limitations of patent rights

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Damages for patent infringement

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The above changes may affect not only applications filed after the implementation of the new law, but also current applications that are still pending after January 1, 2013.