The amended Patent Act has become effective as of June 13, 2013. Major amendments include: (1) Where an applicant respectively files an “invention patent” application and a “utility model patent” application for the same invention on the same date, who voluntarily states the above fact in the applications at the time of filing and obtained the utility model patent first, Taiwan Intellectual Property Office ("TIPO") shall request the applicant to select one patent application within a specified time limit before a decision of allowance is issued on the invention patent application. If the applicant fails to state the fact at the time of filing or fails to make the selection within the specified time limit, TIPO will reject the invention patent application. (2) If the applicant selects the “invention patent” in the aforesaid case, the “utility model patent” right shall lapse from the date when the invention patent is published. If the applicant wishes to exercise the right against a third party for its exploitation of the subject invention before the grant of the invention patent, the applicant shall only be entitled to select one remedy, i.e. claiming compensation based on “invention patent” or claiming damages based on “utility model patent”, to avoid double recovery for damages. (3) Reasonable royalty which may be collected from exploiting the patent under licensing may serve as the basis for calculating the damages of patent infringement. (4) In case of willful infringement, the court may, upon the claimant’s motion and after considering facts and circumstances of the infringement, decide to award damages in an amount which is higher than and up to three times of the amount of actual damage incurred. (5) The patentee of a utility model patent cannot disseminate warning messages to the infringer without presenting the technical evaluation report of the utility model patent.
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Amendment of the Patent Act
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