PROPOSED AMENDMENT TO ARTICLE 134 OF PATENT LAW

05/01/2001

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To enable the ROC (Taiwan)'s accession to the World Trade Organization, the IPO proposed to amend Article 134 of the Patent Law, and held a public hearing on 22 March 2001 to announce the proposed amendment and receive comments and suggestions from the public. The proposed amendment has been reviewed and was ap-proved by the Executive Yuan on 18 April 2001, and be delivered to the Legislative Yuan for re-view. The background information and the content of the proposed amendment are as fol-lows:

I. Background Information
The Patent Law currently in effect was amended on 21 January 1994 ("1994 Patent Law Amendment"). According to the Patent Law prior to the 1994 Patent Law Amendment ("Old Patent Law"), the term of patent right took effect from the publication date and would expire on the following date:

Invention Patent: 15 years from the publica-tion date, but not exceeding 18 years from the filing date.

New Utility Model Patent: 10 years from the publication date, but not exceeding 12 years from the filing date.

New Design Patent: 5 years from the publica-tion date, but not exceeding 6 years from the filing date.

According to the 1994 Patent Law Amendment, the term of a patent still commences from the publication date, and its expiration date is as follows:

Invention Patent: 20 years from the filing date.

New Utility Model Patent: 12 years from the filing date.

New Design Patent: 10 years from the filing date.

For patent cases which have been allowed and published before the 1994 Patent Law Amend-ment, the calculation of patent terms for these patent cases should still be governed by the Old Patent Law.

Subsequent to the 1994 Patent Law Amendment, a further amendment to the Patent Law was promulgated and announced on 7 May 1997 ("1997 Patent Law Amendment"). Under the 1997 Patent Law Amendment, the duration of a new design patent is extended to 12 years from the filing date. Although the 1997 Patent Law Amendment has been promulgated, provisions involved in the 1997 Patent Law Amendment will only take effect when Taiwan joins the WTO.

II. Content of Proposed Amendment

According to Article 33 of WTO TRIPs Agree-ment, patent right should endure for at least a 20-year term from the filing date. Paragraph 2 of Article 70 further states that obligations should also apply to all subject matters existing at the date of application of TRIPs Agreement for the member in question, which is protected in the member on said date or which meet or comes subsequently to meet the criteria for protection. To comply with the above TRIPs standards, it is proposed to amend Article 134 of the Patent Law as follows:

For patent cases which have been allowed and published before the 1994 Patent Law Amendment, the calculation of their patent terms should be governed by the provisions prior to this amendment. Nevertheless, for invention patents that are still valid at the time when the WTO TRIPs Agreement takes effect in the ROC, the patent terms of these patent cases will be governed by the new amend-ment.

For new design patents that are still valid at the time when the WTO TRIPs Agreement takes effect in the ROC, their patent terms should be governed by the 1997 Patent Law Amend-ment.

We will closely watch developments of the proposed amendment, and report timely for our readers' reference.