PATENT LAW AMENDMENT

03/01/1999

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The Executive Yuan finished drafting an amendment to the Patent Law on 12 October 1998 and submitted it for review by the Legislature. The amendment is aimed at minimizing impediments to the enforcement and exercise of patent rights by patentees. Major contents are as follows:

Where an opposition or cancellation case is dismissed upon substantive examination, no person should be allowed to institute a new cancellation action based on the same facts and the same evidence. This holds true as soon as a decision has been rendered by the Intellectual Property Office (IPO), even before the decision has become irrevocable through administrative appeals or administrative suit proceedings. This provision is intended to prevent recurrent cancellation cases necessitating repeated examination.

When instituting a criminal complaint, a patentee should submit an infringement assessment report or a comparison and analysis report confirming the infringement of the patent right. This provision gives the patentee the option of commissioning an assessment report from a third party or submitting his own analysis report, so as to avoid impeding the enforcement and exercise of patent rights by imposing overly strict conditions on the lodging of complaints.

It is not necessary for a patentee to send a written notice requesting removal of the infringement before instituting a criminal complaint, since sending such a notice might lead the suspected infringers to take evasive actions or destroy evidence.

The existing provision that the Judicial Yuan and the Executive Yuan should cooperatively appoint professional institutions for infringement assessment is shifted to a newly added Article, and a new provision that when handling patent infringement cases, courts or prosecutors may entrust the above-mentioned professional institutions to carry out infringement assessment is added.

We will continue watch and keep our readers advised of future progress on the Patent Law amendment.