Newsletter
PROPOSED PATENT LAW AMENDMENTS
On 17 May 2002, the Executive Yuan approved certain draft amendments to the Patent Law, and forwarded it to the Legislative Yuan for review. The amendments mainly reflect the comments included in the final report of the Economic Development Advisory Conference, which called for greater protection of intellectual property rights and expedited establishment of a sound patent examination system. The main points are as follows:
Under current Patent Law, the wordings used to define various time periods are not consistent (e.g. in some cases "from the day of" is used, and in others "from the day following"). This has led to confusion. It is therefore proposed to unify the wording to "from the day of," and to explicitly provide that in principle, the day of the con-cerned time period is not included in the calcu-lation of the period, except for where otherwise provided (for example, the calculation of patent term).
The current provisions on novelty, inventive step, and creativity of a patent application are not precise and comprehensive. The amendments, drafted with reference to foreign legislation, will make them more pertinent.
Under the current law, to obtain a filing date, an applicant must have paid the filing fees. How-ever, fee payment should more appropriately be a matter that can be subsequently corrected. It is inappropriate to deny a filing date due to non-payment of fees or failure to pay it in full. If an applicant does fail to pay the filing fee prop-erly, and does not rectify the situation after being given notice to do so, the patent application will not be accepted. Therefore, following the prac-tices of other countries, fee payment will no longer be a condition for obtaining a filing date.
In response to the international trend toward re-laxing the drafting requirements as to patent specifications, changes are proposed to the pro-visions governing the disclosure of patent speci-fications, and to those governing amendments and corrections to specifications.
To comply with Article 5 of the Law of Admin-istrative Procedures, the grounds for rejecting a patent should be explicitly defined. Therefore the law will be amended to clearly list the rea-sons for rejecting a patent application.
At present, the general public may raise objec-tions against a patent allowance or grant through opposition actions (filed after a patent applica-tion is allowed but before a patent is issued), and cancellation actions (filed after a patent is issued). Because an opposition action is extremely time-consuming, there is often a long period of uncertainty before it is finally determined whether a patent application is granted or not. Furthermore, an opposition action can be used as a means to prevent a patentee from receiving a patent certificate. It thus represents an area in which the law fails to protect patentees' rights. Because the statutory grounds for filing opposi-tion and cancellation actions are generally the same, and there is no difference between these two procedures, it is now proposed to incorpo-rate the grounds for filing an opposition action into those for a cancellation action, and to abol-ish the present opposition procedure. This will simplify the administrative disputes procedure, and allow an early confirmation of patent rights.
Under the proposed amendments, as soon as a patent application is approved, the applicant can pay the required fees and receive a patent cer-tificate, and the patent right will take effect from the publication date. If it is discovered after a patent certificate is issued that the patent case does not meet the statutory requirements for patentability, the IPO may revoke the patent. Thus there is no need to initiate ex officio ex-amination before a patent certificate is issued. It is therefore proposed to delete current provisions regarding ex officio examination during the pub-lication period of the concerned patent applica-tion.
Currently an application will not be granted unless the three-month publication period has elapsed without any opposition action being filed, or until any such opposition action, if filed, has been irrevocably rejected. In line with the abol-ishment of opposition actions, the law will be amended to provide that an applicant may pay the requisite fees and be granted patent rights as soon as his application is approved.
To bring the Patent Law in line with Article 28 of the WTO TRIPs agreement, a new provision will be introduced to the effect that a patentee may forbid a third party from offering patented goods for sale, or importing them for that purpose, without the patentee's consent.
At present, if a divisional application is filed af-ter a patent application is allowed, a further examination must be made to determine whether the divided patents go beyond the scope of the patent originally allowed. Other countries do not have similar provisions allowing patent rights to be divided. In view of this, it is now proposed to repeal the provisions allowing divisional appli-cations.
At present, the examination procedure of can-cellation actions follows the procedure of oppo-sition actions. In tandem with the abolishment of opposition actions, new provisions will be in-troduced to explicitly define the procedure for examining cancellation actions.
Currently, patent marking must not go beyond the scope of the patent referred to. Non-patented goods, and goods not produced by a patented process, must not be marked as being patented, or be marked in a way that may mislead people to believe that they are patented. Persons who violate the above rules are subject to criminal penalties. However, because there are adequate provisions in the Criminal Code, the Fair Trade Law and the Civil Code to cover such matters, it is proposed to remove provisions on patent marking matters and related criminal penalties from the Patent Law.
To effectively encourage individuals, schools and small and medium-sized enterprises to ex-ploit their patent rights, amendments are pro-posed to reduce or exempt patent annuities.
To protect the legitimate interests of patentees, a new provision is proposed that if a cancellation action filed with the IPO is connected with a court case over patent infringement, the IPO may examine the cancellation action as a matter of priority.
Following the practices of other countries, new utility model patent applications will undergo formality examination only, instead of substan-tive examination as at present.
In line with the adoption of formality examina-tion for new utility model patent applications, a system of technical reports will be introduced. After a new utility model patent is published, any person may apply with the IPO for a technical report as to the patentability of the application. When the holder of a new utility model patent seeks to enforce its patent rights, it should also present a technical report prepared by the IPO.
Infringement of invention patents has already been decriminalized. It is now proposed to also decriminalize infringement of new utility model patents and new design patents. This will lead to resolution of patent infringement disputes en-tirely through civil remedies.
The draft amendments introduce several major reforms, including abolishment of the opposition actions, adoption of formality examination for new utility model applications, and new utility model technical reports. To ease the changeover from the old to the new law, provisions are proposed to cover the transitional period. Also, to make operational adjustments to facilitate the changeover, the Executive Yuan will decide when the amendments will come into force.
Lee and Li will follow the progress of the amendments closely.