Newsletter
PROMULGATION OF ACT GOV-ERNING PATENT ATTORNEYS
The Legislative Yuan passed the Act Governing Patent Attorneys on 16 June 2007, which will take effect 6 months after it is announced. After the Act takes effect, the ROC (Taiwan) will, for the first time, have a patent attorney bar, which is distinct from the current practice that a person can registered himself /herself as a patent agent if he / she meets specific professional qualifica-tions, such as industrial technician, attorney, accountant or he / she used to serve as a patent examiner. The major contents of the Act are as follows:
．An ROC national who has passed the patent bar examination and received a Patent Attor-ney Certificate may practice as a patent at-torney. A foreigner may take patent bar ex-amination in accordance with the ROC laws, and may practice as a patent attorney if he/she has passed the examination and received a Patent Attorney Certificate.
．A patent attorney must pass the pre-practice training, and file an application with the Patent Authorities for patent attorney recordation and participate in Patent Attorney Association. However, before the Patent Attorney Asso-ciation is established, the requirement as to participation in Patent Attorney Association as stated above will not apply.
．A patent attorney must practice in one of the following formats: (1) establishing a firm, or (2) jointly establish a firm together with an-other patent attorney or other patent attorneys.
．Practice by a patent attorney may include: (1) patent applications, (2) patent opposition and cancellation matters, (3) recordation of patent assignment, trust creation on a patent, pledge creation on a patent, patent licensing, as well as compulsory patent licensing matters, and (4) other patent matters as prescribed by Patent Act and other rules and regulations.
．A patent attorney may not handle the follow-ing cases: (1) the same case that has been handled for the counter party of the engaging party by him/ her by another patent attorney working in the same firm, (2) a case that has been handled by him/her during his/her ser-vice with an administrative government agency or a court, or (3) a related case that has been handled by him/her during his/her ser-vice with an administrative government agency or a court.
．A foreigner who has received a Patent Attor-ney Certificate should receive a permit by the in-charge government authority when prac-ticing as a Patent Attorney, and comply with the ROC laws and the Article of Incorporation of the Patent Attorney Bar. The above-mentioned foreigner must use Chinese language when making any declaration before the relevant government agencies, and any document presented thereby must be made in Chinese language.
．Where there are more than 15 patent attorneys recorded with the Patent Authorities, the Pat-ent Attorney Association should be estab-lished in the place where the central govern-ment is located. There should be only one Patent Attorney Association, and the Patent Attorney Association should promulgate its Article of Incorporation, apply for establish-ment with the in-charge government agency, and record the same with the patent authori-ties.
．A person who has any of the following quali-fications (as supported by evidentiary docu-ments) prior to the Act takes effect may apply for a complete waiver of taking patent bar examination:
1.a qualified technician, attorney or ac-countant who has received a Patent Agent Certificate and who has practiced in patent field (as defined in Article 9 of the Act) for more than one year;
2.a qualified government officer (who has passed the advanced government officer examination, who has passed special ex-aminations equivalent to the advanced government officer examination, or who has transferred to be a government officer after passing the special professional and technician examinations) who served as a patent examiner for more than 2 years and received a Patent Agent Certificate, and who has practiced in patent field (as de-fined in Article 9 of the Act) for more than one year; or
3.a person who acted as a full-time patent examiner at the patent authorities for patent examination work for more than 2 years, and received a Patent Agent Certificate, and who has practiced in patent field (as defined in Article 9 of the Act) for more than three year.