Newsletter
ONGOING AMENDMENTS OF PATENT LAW
The current Patent Law as amended on 21 January 1994 took effect on 23 January 1994. To comply with the World Trade Organization (WTO) TRIPs standards, the Legislative Yuan (LY) amended the Patent Law again in 1997 (such as deleting the reciprocity requirements for seeking patent protection on microorganism per se inventions and those for seeking patent term extension for pharmaceutical-related or agro-chemical-related patents, extending new design patent term to 12 years, etc.). The 1997 amended provisions will take effect when the ROC joins the WTO.
During the past several years, the Executive Yuan (EY) and the LY proposed further amendments to the Patent Law, and each sub-mitted its bills for such proposes. In addition, the LY also proposed certain amendments through cross-party negotiations. The following bills will be discussed by the LY in the future:
Each of the above bills is summarized as follows:
EY Bill No. 6928-1
The EY sent this bill to the LY on 27 December 1999, which was approved at the 1st reading meeting on 26 June 2000. Its major contents are as follows:
To comply with the "first to file" principle and the laying-open practice, an invention appli-cation (or a new utility model application) will not be allowed for patent protection if its content is identical to that disclosed in the specification or drawings for an earlier filed patent application which is laid open or pub-lished subsequent to the filing of the later-filed application. The above does not apply where the applicant is the same for both applications. The same principles apply to new design patent applications.
To simplify the application procedure, Oath and Assignment documents may be submitted later, and are not required to obtain a filing date.
Currently, a foreign applicant may claim pri-ority only if both of the following reciprocity requirements are met:
1.A corresponding basic application for an identical invention, utility model or new design was first and legally filed in a country that has patent priority claim re-ciprocity with the ROC; and
2.The applicant is a national from a country that has established reciprocity with the ROC for patent priority claims.
To be in line with international standards, the second reciprocity requirement above will be relaxed. If the home country of a patent ap-plicant has not yet established reciprocity with the ROC, the applicant may still claim priority in the ROC if he has a domicile or business place in one of the reciprocal countries. The EY will determine the effective date of this amendment.
Domestic priority claim practice will be adopted to enable an applicant, who files a further application based on an invention ap-plication or a new utility model application earlier filed by him in the ROC, to claim pri-ority with respect to the invention or creation disclosed in the specification or drawings of the earlier-filed application. However, do-mestic priority claim cannot be made under any one of the following circumstances:
1.where 12 months have elapsed from the day following the filing date of the earlier filed application;
2.where international or domestic priority claim has already been made under the ROC Patent Law with respect to the in-vention or creation disclosed in the earlier filed application;
3.where the earlier filed application is a di-visional application filed under Patent Law Article 32, Paragraph 1, or a con-verted application filed under Article 101; and
4.where the earlier filed application has been decided.
In addition, the priority date thus claimed may not be earlier than the date on which the amendment takes effect.
An applicant may submit a deposit certificate within three months from the day following the date of filing the patent application (the applicant still has to complete the deposit be-fore the patent filing). Otherwise, no deposit will be considered made.
If a person files two or more patent applica-tions covering the same invention or creation, the earlier/earliest filed application will enjoy the priority. The above, however, does not apply where the priority date claimed for the later application is earlier than the filing date of the earlier/earliest filed application.
Patent-of-addition applications that, at the time when the amendment takes effect, have been filed but not yet been irrevocably decided, and granted patent-of-addition cases that are still valid at the same time, should be dealt with pursuant to the old Patent Law.
To avoid duplication of R&D efforts, lay-ing-open practice will be adopted for inven-tion patent applications. If after receiving and examining the filing documents for an inven-tion patent application, the patent authority finds no procedural defect or grounds for non-publication, the application will be laid open for public access within 18 months from the day following the date of filing. Where priority is claimed, the 18-month period will be counted from the day following the priority date, and in the case of multiple priority claims, from the day following the earliest priority date.
An application should not be laid open if (1) it is withdrawn within 15 months from the day following the filing date; (2) it is related to confidential information pertaining to national defense or other national security matters; or (3) it is detrimental to public order or good morals. In addition, within 3 years from the day following the patent filing date, any per-son may file a request with the patent authority for a substantive examination. Such request may not be withdrawn. Where no such re-quest has been made within the statutory pe-riod, the application should be deemed as having been withdrawn.
Where, after an application is laid open but before it is allowed and published, another person practices the invention for commercial purposes, the patent authority may, upon ap-plication, expedite its substantive examination. If, subsequent to the laying open of the patent application, the applicant serves a written no-tice of the content of his application to such person, and the latter continues to practice the invention commercially after receiving the notice, the applicant may seek reasonable compensation after his application is irrevo-cably granted. A patentee may also seek rea-sonable compensation from any person who is aware of the laying open of the patent appli-cation and continues to practice the invention commercially before the application is al-lowed and published. The right to seek com-pensation will not affect the exercise of other rights, and it will become extinguished if not exercised within 2 years from the day fol-lowing the date of patent grant.
The above will apply to invention patent ap-plications that are filed one year after the amendment takes effect.
1.Invention Patent Applications
The patent authority may, ex officio, require an applicant to amend or supplement specifica-tions or drawings within a specified period. An applicant may make amendments or sup-plements within 15 months from the day fol-lowing the patent filing date (or, where an in-ternational priority is claimed, from the day following the priority date). Certain limita-tions apply to an amendment or a supplement made beyond the 15-month period.
2.New Design Patent Applications
Where an applicant or an opposition petitioner submits models or samples, the patent author-ity may conduct on-site inspections. If an ap-plicant applies for amendments or supple-ments to specifications and drawings, such amendments or supplements may not change the substantive content of the application. After a design application is allowed and published, amendments or supplements may only be made to correct erroneous disclosure and/or to clarify unclear statements.
New provisions are added with respect to creation of trust on granted patents. Such trust arrangements cannot be asserted against any third party unless registered with the patent authority. In the case of a jointly owned patent, none of the co-owners may create a trust on the patent without the consent of all other co-owners.
Currently, only until an opposi-tion/cancellation action against a patent has become irrevocably dismissed through ad-ministrative appeal proceedings, can others be barred from filing a new cancellation action based on the same facts and evidence. To prevent repeated filing of cancellation cases and duplication of examinations and to protect the right of patentees, the word "irrevocably" will be deleted from the current provision. Thus, once an opposition or cancellation ac-tion is dismissed by the IPO, no person can file another cancellation action based on the same facts and evidence.
New design will be defined as "a creation made in the respect of the shape, pattern or color, or a combination thereof, of an article, which can be appraised through visual ap-peals." Patentable requirements for obtaining a new design patent are amended to include: (1) industrial applicability, (2) novelty, and (3) inventive step.
Currently, a failure to meet the patentable re-quirements set forth in Patent Law Article 107 is not among the statutory grounds for filing an opposition action against an allowed new design patent application. In the future, vio-lations of Article 107 will be grounds for filing an opposition action.
Rights in an associated new design patent are explicitly stated to be dependent on its parent patent, and as such, may not be asserted in-dependently nor to expand to similar designs.
Currently, when filing a criminal complaint against patent infringement, a complainant must submit an infringement assessment re-port and a copy of the cease and desist letter issued to the defendant. These conditions will be removed. In addition, the current Article 131, Paragraph 4 that requires the Judicial Yuan and the EY to coordinate together in designating specialist institutions for provid-ing infringement assessment opinion will be incorporated in the new Article 131-1, with an added provision that the court or a public prosecutor may seek assessment opinion from such institutions.
Legislator Proposed Bill No. 2936
This bill was proposed by 42 legislators, but did not pass the 1st reading on 26 June 2000. Some legislators proposed to make a new amendment bill. The chairman of the 1st reading meeting ruled to leave this matter to future cross-party negotiations. The major contents of the bill are as follows:
According to Patent Law Article 70, Item 3, if an annuity is not paid before the due date for a late payment, the patent becomes extinguished from the day following the original due date except where a reinstatement petition is filed in accordance with Article 18. Since the above provision is strict and against the leg-islative intent of protecting inventions and creations, it is proposed to be deleted.
According to Patent Law Article 86, if an annuity is not paid before the due date, a late payment made within 6 months from the original due date is acceptable, provided that the late payment is double the amount origi-nally due. In tandem with the amendment mentioned above, it is proposed that a claim for annuity payment be compulsorily en-forced.
EY Bill No. 7931
At the Sino-American IPR Negotiation Meetings held in 2001, the US side pointed out that the current Patent Law provisions governing patent terms do not fully meet the TRIPs standards. The EY thus prepared this bill and delivered the same to the LY for review on 20 April 2001. Its major contents are as follows:
Currently, the term of an invention patent ex-pires 20 years from the filing date. In addition, for an invention patent approved and pub-lished before 23 January 1994, its term expires 15 years from the publication date, but not to exceed 18 years from the filing date. To adapt to the TRIPs standards, for an invention patent valid at the time when the TRIPs take effect in the ROC, its expiration date will be governed by the amended provisions (i.e., 20 years from the filing date).
Currently, a new design patent expires 10 years from the filing date. In addition, for a new design patent approved and published before 23 January 1994, its term expires 5 years from the publication date, but not to exceed 6 years from the filing date. Accord-ing to the 1997 Patent Law amendment, the term of a new design patent expires 12 years from the filing date. The 1997 amendment will take effect after the ROC joins the WTO. To adapt to the TRIPs standards, for a new design patent valid at the time when the TRIPs take effect in the ROC, its term will be gov-erned by the 1997 amendment (i.e., 12 years from the filing date).
Legislator Bill No. 3156
The 1994 Patent Law amendment deleted jail punishments for infringing invention patents, but fine punishments are still available. The 1994 amendment did not modify criminal punish-ments for infringing new utility model patents and new design patents. This bill, proposed by 45 legislators, seeks to delete all criminal pun-ishments for patent infringement. Its major contents are as follows:
To achieve decriminalization, amendments to the Patent Law penal provisions are as fol-lows:
1.Any person who manufactures products protected by a product invention patent without authorization from the patentee and thus infringes on the patent shall be punished with an administrative fine of not more than NT$600,000 (Article 123.)
2.Any person who uses a process/method protected by a process/method invention patent without authorization from the pat-entee and thus infringes on an invention patent shall be punished with an adminis-trative fine of not more than NT$300,000 (Article 124.)
3.Any person who manufactures products protected by a new utility model patent without authorization from the patentee and thus infringes on the patent shall be punished with an administrative fine of not more than NT$150,000 (Article 125.)
4.Any person who manufactures products protected by a new design patent without authorization from the patentee and thus infringes on the patent shall be punished with an administrative fine of nor more than NT$60,000 (Article 126.)
5.Any person who is aware that the con-cerned products are manufactured without authorization from an invention patent and who sells the products, or display or import the products for purposes of selling them, shall be punished with an administrative fine of not more than NT$60,000 (Article 127.)
6.Any person who is aware that the con-cerned products are manufactured without authorization from a new utility model patent and who sells the products, or dis-play or import the products for purposes of selling them shall be punished with an administrative fine of not more than NT$30,000 (Article 128.)
7.Any person who is aware that the con-cerned products are manufactured without authorization from a new design patent and who sells the products, or display or import the products for purposes of selling them shall be punished with an administrative fine of not more than NT$15,000 (Article 129.)
8.Article 130 providing for criminal liability for false or misleading patent marking is deleted.
If an administrative fine is not paid on time, it can be compulsorily collected.
According to Patent Law Article 89, the court may award damages against intentional in-fringement up to double the amount of the actual damage. In tandem with the decrimi-nalization, the court may award up to triple damages against an international infringe-ment.
Party Negotiation Bill of 29 May 2001
The LY presented this bill on 29 May 2001 through cross-party negotiations. Its major contents are as follows:
This bill deletes the criminal fines for in-fringing invention patents; however, the criminal punishments for infringing new util-ity model and new design patents remain un-changed. The above amendment is different from the amendment proposed under Legis-lator Bill No. 3156.
This bill authorizes up to triple damages against intentional infringement, which is the same as the amendment proposed under Leg-islator Bill No. 3156.
This bill also deletes the requirements of sub-mitting patent infringement assessment re-ports and cease and desist letters when filing criminal complaints against patent infringe-ments. However, this bill requires the sub-mission of an infringement analysis report when filing a complaint against unauthorized manufacturers of products protected by new utility model patents or new design patents. The above amendment is different from that under EY Bill No. 6928-1.
On this issue, the amendment proposed in this bill is the same as that under EY Bill No. 6928-1.
To avoid damages caused to lawful business due to police raids and seizures, in the future, if a judge, public prosecutor or judicial police officer finds it necessary to conduct police raids or seizures, he must pay attention to the reputation and property rights of the defendant or suspected, and only conduct the proceed-ings in a manner consistent with the principle of proportionality
The amendment on this issue is the same as that under EY Bill No. 7931.
The amendment on this issue is the same as that under EY Bill No. 7931.
During the last meeting for the session ending on 5 June 2001, the LY included several times the above bills into its agenda. However, none of these bills were discussed as originally scheduled. The LY's next session will start on 18 September 2001. We will closely watch the development and keep our readers informed.