ROC (TAIWAN) PATENT ACT AMENDMENT PROMULGATED

01/01/2012

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For purposes of enhancing the economic and industrial competitiveness, promoting development of local critical technologies, as well as to comply the need of enhancing the quality of patent examination, the Legislative Yuan of the ROC (Taiwan) completed the 3rd reading of an amendment of the Patent Act ("Amended Act") on 29 November 2011 and the amended provisions were promulgated by the President on 21 December 2011. According to Article 159 of the Amended Act, the date on which the amended provisions take effect shall be decided and announced by the Executive Yuan. Considering the broad range of amendments, the Intellectual Property Office has started amendments of the Enforcement Rules, Patent Examination Guidelines, and their internal patent examination management systems so as to adapt to the Amended Act. It is expected that the Amended Act shall take effect in around November 2012. The major amendments are summarized as follows:

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Definition Clarification and Term Change

1.

"Creations""

The so-called "creations" belong to a higher level concept of inventions and new utility models. To avoid the misunderstanding that a "creation" means "new utility model" or "design" and to prevent inconsistent use of the expression "creation" in the Patent Act, it is proposed to include both inventions and new utility under the term "creations." (Article 1)

2.

Change of Chinese Title of "Design Patent"

In consideration of international practices, the Chinese title of "design patent" is to be changed from 新式樣專利(phonetic translation: xin shiyang zhuanli) to 設計專利(phonetic translation: sheji zhuanli). (Articles 2 & 121)

3.

Definition of "Practice" of a Patent

The term "practice" includes manufacture, offer for sale, sale, use or import for above-mentioned purposes, and represents a higher level concept of use. To avoid inconsistent use of the terms "practice" and "use," it is proposed to add the definition of "practice" and amend the relevant Patent Act provisions containing the terms "practice" and "use." (Articles 22, 58, 87, 122 & 136)

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Amendments Regarding Patent Application

1.

Novelty & Inventive Step/Creativeness

Absolute novelty requirement is adopted in Taiwan. Prior to amendment, in case of any of the events prescribed in the Patent Act (including prior disclosure made for research or experimental purposes, prior disclosure made at a trade show sponsored or recognized by Taiwan government, or prior disclosure made against the will of the patent applicant), the novelty would not be affected by the said prior disclosure if a Taiwanese patent application is filed within 6 months as of the date of disclosure. According to the Amended Act, "publication made based on the will of the applicant" would become another exception for enjoying the grace period. In addition to applying to novelty requirements, all the grace period exceptions shall further apply to inventive requirement (for inventions and utility models) and creativeness requirement (for designs). (Articles 22 & 122)

2.

Claim(s) and Abstract Shall Separate from Specification

Prior to amendment, a specification contains, among others, the claim(s) and an abstract. Considering international practices, it is proposed to amend the current Patent Law so that the claim(s) and abstract shall be separate documents from the specification. (Articles 23 & 25)

3.

Assignment Documents

Prior to amendment, Assignment documents are needed when filing patent applications. Considering that a patent applicant always states in the transmittal letter that he/she is entitled to apply for patent and also considering practices in other countries, the requirement for submitting an Assignment is deleted. (Articles 25, 106 & 125)

4.

Deadline for Submitting Deposit Certificates

According to the Amended Act, for a patent application involving biological deposit, the certificate of deposit as well as the viability test report shall merge into one single certificate. Given the above, the deadline for submitting a certificate of deposit has been changed from the original "within 3 months from the filing date" to "within 4 months from the filing date." For a patent application filed with priority claim(s), the said deadline is within 16 months from the earliest priority date". (Article 27)

5.

Regarding Patent Applications Filed with Foreign-language Specifications, Claims and Drawings as Temporary Substitutes

Prior to amendment, a patent applicant can first file a patent application with a foreign-language patent specification and claim(s) so as to obtain a filing date provided that, he/she submits a Chinese-language patent specification and claim(s) within the specified deadline. If the content of the Chinese-language patent specification and claim(s) later submitted is different from that of the originally filed foreign-language patent specification and claim(s), the filing date of the patent application would be thus delayed to the date of submitting the Chinese-language patent specification and claim(s). In addition, prior to amendment, where there is any translation error in the Chinese-language patent specification and claim(s), the patent applicant may apply for amendment (for pending applications) or correction (for granted patents) in accordance with the Patent Act, and any such amendment/correction shall not cause substantive change to the original disclosure (as decided based on the Chinese-language patent specification and claims). In practice, the current amendment/correction procedure does not necessarily help to deal with translation errors.

Through the amendment, it is clearly stated that amendment of a foreign-language patent specification and claim(s) is not allowed. In addition, the amendment brought into the patent system a new procedure for amending/correcting translation errors (i.e., except for amendment/correction of translation errors, any amendment/correction shall not go beyond the disclosure scope of the specification, claims and drawings (Chinese-language version) submitted at the time of patent filing, and amendment/correction of translation errors shall not go beyond the disclosure scope of the foreign-language specification, claims and drawings originally submitted. According to Article 145 of the Amended Act, the competent authority in charge shall designate the specific foreign languages used in preparing foreign-language specifications, claims and drawings which are acceptable as temporary substitutes for obtaining filing dates as stated above. A violation of the requirement for amending/correcting translational error(s) shall be a ground for invalidating a granted patent. (Articles 25, 44, 67, 106, 110, 127, 133, 139 & 145)

6.

Revival of Priority Claim

Prior to amendment, a patent applicant must, at the time of patent filing, declare a priority claim. The applicant must also, within 4 months as of the filing date, submit the required priority document. In case of a violation of any of the above requirements, the priority claim shall be lost. Considering the international practice, the Amended Act states the following: where a patent applicant, with no intent, fails to claim priority at the time of patent filing or fails to submit the priority document within 16 months as of the date of the first priority date (thus leading to the result that the priority claim is deemed not having been made), the patent applicant may, within 16 months from the earliest priority date, apply for revival of the priority claim, pay the required fee and proceed with the make-up priority claim concerned. (Articles 29, 59 & 70)

7.

Relaxation of the Timing Requirement for Patent Division

Prior to amendment, patent division for an invention patent application must be made prior to the end of the first examination stage or prior to the end of the re-examination stage (i.e., the further examination done by the Intellectual Property Office – IPO); patent division made after patent allowance/grant is not allowed.

To provide patent applicants with fair opportunities for patent division, the Amended Act shall allow an invention patent applicant to effect patent division within 30 days as of the date of receiving an allowance decision issued at the first examination stage. However, if the patent application is allowed at the reexamination stage, patent division made afterward is now allowed. (Article 34)

8.

Restrictions on Domestic Priority Claim

Considering other concerned amendments, the grounds for not allowing domestic priority claim have been amended (such as, domestic priority claim is not allowed if the original patent application is a divisional patent application for utility model). Prior to amendment, domestic priority claim is not allowed if the original patent application has been decided. Since the timing for issuing an examination decision (for inventions) or a decision (for utility models) is beyond the expectation of a patent applicant, the above-mentioned restriction has been relaxed from "where the original patent application has been decided" to "where the original patent application has been published or rejected via an examination decision (for inventions) or a decision (for utility models)". (Article 30)

9.

Amendment of Invention Patent Applications

Prior to amendment, for a pending invention patent application, the applicant can apply for a voluntary amendment only at the specific timing as prescribed in the Patent Act (such as within 15 months as of the filing date, at the rime when applying for substantive examination, at the time when filing a response to an office action, at the time when applying for re-examination or filing a re-examination brief). Considering the purpose for patent applicants to make amendments (to make the patent disclosure more clear and to facilitate patent examination), it is considered unnecessary to limit the timing for making amendments. Therefore, the timing limitations for making amendments have been deleted. However, to avoid the delay caused to patent examination because of repeated amendments filed by patent applicants, the Amended Act introduces "Final Notification" practice into the patent system in Taiwan (as explained below):

(1)

Before the IPO issues a rejection decision for an invention patent application, the IPO must issue a "Pre-rejection Notification" to allow the patent applicant a chance to file a response within a specified time limit, during which the applicant may apply for amendment.

(2)

After the IPO issues a Pre-rejection Notification at the fist examination stage, as it deems necessary, the IPO may issue a Final Notification. Under such situation, the applicant can only apply for amendment within the response period based on any of the following reasons: (1) deleing claim(s); (2) narrowing the claim scope; (3) amending an erroneous disclosure; and (4) clarifying an unclear disclosure. If there is a violation of the above requirement, the IPO may issue a decision accordingly.

(3)

For an original patent application or its divisional patent application, the IPO may issue a Final Notification under any of the following situations: (1) where the content of the notification issued for the original patent application is the same as that of the notification issued for the divisional patent application; (2) where the content of the notification issued for the divisional patent application is same the as that of the notification issued for the original patent application; and (3) where the content of the notification issued for the divisional patent application is the same as that of the notification issued for any other divisional patent application.

(4)

For a patent application rejected at the first examination stage, for which a Final Notification was issued prior to rejection, when making an amendment at the re-examination stage, the amendment limitations stated in Item 2 above also apply. However, such limitations shall not apply if the IPO, through the re-examination, concludes that the Final Notification (as issued at the first examination stage) was improperly issued.

Under any of the following situations, the IPO may issue a Final Notification: (1) where the re-examination reason(s) still cannot overcome the patentability issues; (2) where the amendment(s) made at the re-examination stage still cannot overcome the patentability issues; and (3) where the amendment made under the situation stated in Item 4 above fails to meet the amendment limitations as stated in Item 2 above. (Articles 43 & 49)

10.

Revival of Patent Right Regarding Patent Issuance Fees and Annuity Payments

Prior to amendment, where a patent applicant fails to pay the patent certificate fee and the first year annuity on time, the patent right shall be deemed non-existing ab initio. Where a patentee fails to pay any of the subsequent annuities before the deadline, he/she may effect a late payment within 6 months from the original deadline by paying double amount of the fee originally due. If such late payment is not paid on time, the patent shall become extinguished as of the day next to the original due date. Unless the default is due to a natural disaster or a reason not attributable to the patentee, it is not possible for the patentee to revive his/her patent right and make up the payment.

To fairly protect patent owners and take into consideration the concerned international practices, the following amendments were made:

(1)

If the annuity for the second or any subsequent payment year is not paid within the original time limit, a late payment can be made within six (6) months from the original due date with an additional 20% late penalty per month elapsed, up to a maximum of one hundred percent (100%) of the annuity amount originally due.

(2)

Payment of additional annuities based on the specified percentage as stated in Item (1) above means that additional annuities will be needed on a monthly basis depending on the time period elapsed from the original due date. For each month elapsed, an additional fee at a ratio of 20% is needed with a maximum additional fee which is same as the amount originally due. If the time period elapsed is between one day and one month, the time period elapsed shall be deemed one month.

(3)

If an applicant, without intent, fails to pay the patent certificate fee and the 1st year annuity before the deadline, he/she may pay the patent certificate fee and double the first year patent annuity within six (6) months from the original due date.

(4)

If a patentee, without intent, fails to pay the 2nd year annuity or any further annuity within the 6-month late payment time period, he/she may apply for reinstating the patent right within one (1) year from the due date for effecting a late payment by paying triple the amount originally due.

(5)

Where a revival of patent right is sought and obtained (as stated in Item (3) above), after the patent becomes extinguished and before the patent is revived and the patent revival is published, such patent right does not apply to the practice already made in good faith and the necessary preparations therefor already completed.

(Articles 52, 59, 70 & 94)

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Utility Model Patent Practice

Major amendments regarding utility model patent practice include the following:

1.

Where an amendment of a utility model patent application goes beyond the scope of the disclosure at the time of patent filing, the said patent applications shall not be allowed.

2.

Where an invention patent application and a utility model patent application are filed on the same day by the same applicant for the same invention, the applicant shall make a selection prior to the allowance of the invention patent application. If the invention patent application is selected, the utility model patent shall be deemed non-existing; if the utility model patent is selected, the invention patent application shall not be allowed.

3.

A correction of a utility model patent shall be subject to formality examination. But, if such correction is examined together with an invalidation case, it shall be subject to substantive examination and a combined decision shall be made.

4.

Where a utility model patent is revoked, for damages caused to another person due to exercise of the utility model patent before patent revocation, the patentee shall be liable for compensating the said damages. However, the above shall not apply if the exercise of the patent right is made based on the content of a utility model patent technical report and if the patentee has exercised considerable attention thereto.

(Articles 32, 112, 117 & 118)

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Design Patent Practice

The major amendments include the following:

1.

Design patent protection shall be expanded to partial designs, computer-generated icons (Icons) designs and graphical user interface (GUI) designs.

2.

Where two or more articles belong to the same category and such articles are in custom sold or used as a set, one design patent application can be filed to cover the designs applying to the said articles.

3.

Derivative design patent practice has been introduced into the patent system, i.e., for two or more similar designs owned by the same person, design patent applications may be filed for a design patent and its derivative design patent(s). The filing date of a derivative design patent application shall not precede the filing date of the original design patent application. An application for a derivative design patent, which is filed after the publication of the original design patent, is not acceptable. An application for derivative design patent protection shall not be accepted if the design covered in such derivative design patent application is not similar to that covered in the original design, but is similar to the design covered in another derivative design patent.

4.

Where a design patent application is converted into a derivative design patent application or where a derivative design patent application is converted into a design patent application, the filing date of the original design patent application shall be taken as the filing date of the converted application. An application for patent conversion shall not be filed under any of the following circumstances: (1) after a decision allowing the original design application is served; (2) after elapse of two months from the day on which a decision rejecting the original design patent application is served.

5.

The term of a design patent shall expire upon an expiry of twelve (12) years from the filing date of the design patent application. A derivative design patent shall expire simultaneously when the original design patent expires.

6.

A derivative design patent can be enforced independently, and its effect shall be extended to the scope of similar designs.

(Articles 121, 127, 129, 131, 135 & 137)

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Invalidation Actions

The major amendments included the following:

1.

Practices regarding "patent revocation actions initiated by the IPO" and "requests for patent corrections by the IPO" are both abolished.

2.

In compliance with other concerned amendments, the grounds for filing invalidation actions are amended (such as a violation of the requirement for correcting translation errors, a violation of the timing for making patent division, a violation of making amendment after receiving a Final Notification etc.).

3.

With respect to ground(s) for filing an invalidation action, the Patent Act provisions in effect at the time of allowance of the concerned patent shall govern. However, for invalidation actions filed based on the ground that "a patent division, patent conversion, or patent correction goes beyond the scope of disclosure made at the time of patent filing" or "a patent correction goes beyond the claim scope at the time of patent publication", the Patent Act provisions applicable at the time of filing the invalidation actions shall govern. The above-mentioned "grounds for invalidation" refer to the substantive requirements and shall apply to patent cases that have been allowed prior to the implementation of the Amended Act.

4.

When filing an invalidation action, the petitioner must submit a "declaration of invalidation." A "declaration of invalidation", once filed, shall not be altered or added after filing, but it can be narrowed. The IPO shall examine an invalidation action without further notice if the supplement of reason(s) or evidence by the invalidation petitioner is likely to delay the examination or if the fact and evidence submitted has been sufficiently clear.

5.

Where a patent covers two or more claims, a petition for an invalidation action can be filed against a part of the claims of the said patent.

6.

When examining an invalidation action, the IPO may, ex officio, examine the reason(s) and evidence not submitted by the invalidation petitioner if the said reason(s) and evidence is within the scope of the invalidation declaration (the IPO must issue a notice to the patentee ordering him/her to file a defense within a specified time limit).

7.

A invalidation petitioner may withdraw his/her invalidation petition before a decision is rendered for such petition. However, if the patentee has already submitted a defense, withdrawal of the petition shall need consent from the patentee. The IPO shall serve the patentee with a notice with respect to withdrawal of invalidation petition. If the patentee raises no objection within 10 days after receiving the service, it shall be deemed that the patentee has agreed to such withdrawal.

8.

If, during the examination stage of an invalidation action against a patent, an application for correcting the said patent is filed, the examination and decision concerned shall be consolidated. If the IPO, through examination, deems the correction application acceptable, they shall serve the invalidation petitioner with a duplicate copy of the corrected specification, claim(s) and/or drawings. Where, during the examination stage of an invalidation action, there are two or more applications for correction, the earlier filed correction application(s) shall be deemed having been withdrawn.

9.

Where there are two or more invalidation petitions filed against the same patent, the IPO may, as it deems necessary, consolidate their examination of the said invalidation petitions. Where the examination of invalidation petitions have been consolidated pursuant to the preceding paragraph, decisions for these petitions may also be consolidated.

10.

Decision on an invalidation petition shall be rendered on a claim-by-claim basis.

11.

Under any of the following circumstances, any person shall not be allowed to file a separate invalidation petition against the same patent based on the same fact and the same evidence: (1) where another invalidation petition filed based on the same fact and the same evidence has been dismissed through examination; (2) where new evidence is submitted with the IPO pursuant to Article 33 of the Intellectual Property Case Adjudication Law, and such new evidence is considered groundless upon examination.

12.

Where an invalidation petition against an invention patent is sustained upon examination, the patent right shall be revoked; such revocation can be made on a claim-by-claim basis.

(Articles 71, 73-75, 77-82)

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Patent Right and Exercise of Patent Right

1.

Patent Term Extension (PTE) for Pharmaceutical-Related or Agrichemical-Related Patents

The amendment deletes the following requirement for seeking PTE: "the time period during which the concerned patent cannot be practiced due to application for a permit has exceeded two years from the patent grant publication date." The following are added into the Patent Act: (1) where a PTE application has not been granted before the original patent term of the concerned patent expires but is granted afterwards, the patent right shall be deemed extended from the day following the expiration date of the original patent term; and (2) During the extended patent term, the patent right shall be limited to the active ingredients and the use(s) identified in the permit. (Articles 53, 54 & 56)

2.

Limitations to Patent Right

According to the Amended Act, limitations to the patent right shall further cover the following: (1) non-public activities made for non-commercial purpose(s); (2) where a revival of patent right is sought and obtained, after the patent becomes extinguished and before the patent is revived and the patent revival is published, the practice already made in good faith and the necessary preparations therefor already completed; (3) research, trial, and necessary acts thereof as conducted for the purpose of obtaining pharmaceutical inspection and registration approval under the Pharmacy Law or obtaining market approval of pharmaceutical from a foreign country. As to the First Sale Exhaustion principle, the Amended Act states that international First Sale Exhaustion principle shall be adopted. (Articles 59 & 60)

3.

Exclusive Patent Licensing

Patent licensing is categorized as exclusive or non-exclusive. Subject to the licensing scope, an exclusive licensee shall be entitled to exclude the patentee or a 3rd party from practicing the licensed patent; however, where there is an agreement providing that the patentee can also practice the patent, such agreement shall govern. An exclusive licensee may sub-license the patent to a 3rd party for practice. However, where there is an agreement providing otherwise, such agreement shall govern. The licensee of a non-exclusive licensing shall not sub-license to a 3rd party his right to practice the patent without the consent of the patentee. A sub-licensing arrangement shall have no legal standing against 3rd parties unless it is recorded with the IPO. (Articles 62 & 63)

4.

Compulsory Patent Licensing Practice

The major amendments include the following:

(1)

In response to national emergency or other major emergencies, the IPO may, through an urgent order or upon notice from the central government authorities in charge, grant compulsory licensing of a patent as needed, and notify the patentee of the same as soon as possible.

(2)

Under any of the following circumstances, for which a compulsory patent licensing is needed, the IPO may, upon request, grant compulsory licensing of a patent: (a) where a non-profit-seeking practice of the patent is sought for enhancement of public welfare; (b) where the practice of a later invention or utility model patent may inevitably infringe on an earlier invention or utility model patent, and where the later invention or utility model patent offers significant technical improvement with considerable economic significance over the prior invention or utility model patent; (c) where a patentee has committed act(s) restricting competition or has committed unfair competition acts, which have been confirmed via a judgment issued by a court or a decision issued by the Fair Trade Commission of the Executive Yuan. Applications for compulsory licensing of a patent covering semiconductor technology shall be filed based on the grounds set forth in Items (a) or (c) above. An application for compulsory licensing of a patent based on the grounds stated in Items (a) or (c) above shall be accepted only when the applicant for compulsory licensing fails to reach a licensing arrangement with the patentee within a considerable time period based on reasonable commercial terms and conditions proposed thereto. For an application for compulsory licensing of a patent based on a ground stated in Item (b) above, the owner of such patent may propose reasonable terms and conditions and seek a grant of compulsory licensing of the patent owned by the applicant filing the earlier compulsory licensing application.

(3)

A decision on an application for compulsory licensing shall be made in writing, and shall indicate the reasons, scope, time period, and the required compensation.

(Articles 87-89)

5.

Newly Added Compulsory Licensing Ground –Public Health Ground

The Amended Act provides a new ground for seeking compulsory patent licensing to assist developing countries and lower-tier developed countries acquire needed pharmaceuticals under patent protection so as to alleviate public health crises afflicting these countries. For purposes of assisting countries lacking pharmaceutical production ability or with inefficient pharmaceutical production ability to obtain pharmaceutical(s) needed in treating AIDS, tuberculosis, malaria, or other infectious diseases, the IPO shall, upon application, grant compulsory licensing to practice a patent concerned so as to supply the required pharmaceutical(s) imported into the said countries. An application for compulsory licensing as stated above shall be accepted only if the applicant fails to reach an licensing arrangement with the patentee concerned within a considerable time period based on reasonable commercial terms and conditions proposed thereto; however, the above shall not apply if compulsory licensing for the required pharmaceutical(s) has been granted in any of the importing countries. (Articles 90 & 91)

6.

Enforcement of Patent Right

The major amendments include the following:

(1)

The draft sets forth subjective elements of a patent infringement act (i.e., a patent owner may claim damage from another person who infringes on the patent with intent or out of negligence). As to the remedy, "removal of infringement or prevention of anticipated infringement", " possibility for infringement" as seen from an objective viewpoint is sufficient, and it is irrelevant whether subjective elements of a patent infringement act are involved or not.

(2)

"Royalty payment amount receivable in case of patent licensing" is added as one of the methods to calculate the amount of damage compensation. To comply with the legal principle that "civil compensation is aimed to make up the damage actually suffered", the provision regarding "maximum triple damage award for malicious infringement" is deleted.

(3)

Considering that patent marking on the patented object or its packaging may become not possible for patents with specific natures, the patent marking requirement was amended as follows: "The patent certificate number of a patent shall be marked on the patented article. In case patent marking on the patented article is not feasible, the patentee may mark such marking on the labels or packaging, or make such marking in a distinct way sufficient to draw other persons’ attention. Where no patent marking is made, evidence shall be produced when claiming damages to prove that the infringer had knowledge or should have had knowledge with respect to the fact that the said article is under patent protection.

(Articles 96-98)

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Transitional Clauses

Considering that some proposed changes involve significant changes in patent practice (such as newly-added ground for asserting novelty grace period, division of an invention patent case after approval at the 1st examination stage, formality examination of an amendment of a new utility model patent, changes with respect to invalidation actions, patent amendment and design patents, etc.), transitional clauses are included in the Amended Act to govern application of such changes.

According to Article 149 of the Amended Act, unless otherwise provided for in the Act, patent applications which have been filed but for which irrevocable examination decisions have not been rendered prior to the implementation of the Amended Act, the Amended Act shall govern. For applications for correction(s) and invalidation petitions which have been filed but for which irrevocable examination decisions have not been rendered prior to the implementation of the Amended Act, the Amended Act shall govern. Other transitional clauses are as follows:

1.

For invention patent applications which have been filed prior to the implementation of the Amended Act but for which examination decisions have been rendered, if the time period for making patent division (within 30 days from the date of receiving the allowance decision issued at the first examination stage) has not expired, the Amended Act (allowing the post allowance division) shall govern. (Paragraph 2, Article 150)

2.

With respect to the amended provisions governing "6-month grace period for novelty/inventive/creativeness requirement based on prior publication made in accordance with the applicant’s wills", "granting design patent protection to partial designs, Icons designs and GUI designs", "applying for design patent protection on two or more articles used or sold as a set" and "derivative design patent practice", they apply to patent applications filed after the Amended Act takes effect. (Article 151).

3.

Where a patent applicant fails to timely (within 3 months from the filing date) submit a certificate of deposit and thus is deemed that the deposit is not made, the deadline for submitting the certificate of deposit as prescribed in the Amended Act (within 4 months from the filing date or within 16 months from the earliest priority date) shall apply provided that an irrevocable examination decision has not been rendered for the said patent application when the Amended Act takes effect. (Article 152)

4.

Prior to the date when the Amended Act takes effect, for a patent application for which the applicant fails to claim priority (at the time of patent filing) or fails to submit a priority document (within 4 months from the filing date), thus leading to a loss of the priority claim, the Amended Act concerning the "revival of priority claim" shall apply provided that the said patent application has not been decided when the Amended Act takes effect and that a period of 16 months (inventions and utility models) or a period of 10 months (designs) from the earliest priority date has not expired. (Article 153)

5.

For applications filed to seek invention patent term extension, which have been filed prior to the date when the Amended Act takes effect, if decisions have not been issued for these applications and if the said invention patents are still in force at the time of implementing the Amended Act, the Amended Act shall govern (deleting the requirement that "the time period during which the concerned patent cannot be practiced due to application for a permit has exceeded two years from the patent grant publication date." (Article 154)

6.

The Amended Act regarding "revival of patent right" due to failure of paying patent certificate fee and annuities shall not apply under any of the following conditions: (a) where, at the time of implementing the Amended Act, the time period for paying an annuity has expired and the concerned patent has been deemed non-existent ab initio pursuant to the Patent Act prior to implementing the Amended Act; (2) where, at the time of implementing the Amended Act, a patent has become extinguished in accordance with the Patent Act prior to implementing the Amended Act. (Article 155)

7.

Where, at the time of implementing the Amended Act, a decision for a design patent application has not been issued, the applicant may, within three (3) months after the implementation date of the Amended Act, apply to convert it into an application covering a partial design. (Article 156)

8.

For associated new design patent applications for which decisions have not been issued at the time of implementing the Amended Act, if these associated design patent applications were filed prior to the publication of their original design patent applications, the applicants may apply to convert these patent applications into derivative design patent applications within three (3) months as of the implementation of the Amended Act. (Article 157)

As stated, the amendment of the Patent Act involves very substantial changes. Concerning the amendments of the Enforcement Rules, Patent Examination Guidelines and the patent-related SOPs, Lee and Li will closely monitor further developments and keep our clients and friends advised from time to time.