NEW LAW IN TAIWAN Filing divisional applications
In the past, once a decision of allowance or a decision of refusal was issued, a divisional application could not be filed. Te new act provides an exception for divisional applications within 30 days following the decision of allowance of the first examination of an invention patent application. Accordingly, Taiwan patent seekers now have greater flexibility in deciding when to file for a divisional application.
Reinstatement of priority claim and patent rights
Under the new act, an applicant may apply for priority claim aſter the initial filing, if the reason for not applying was that it was unintentional. A 16-month (invention and utility model) and 10-month (design) period is now given from the earliest priority date, for filing of reinstatement and for providing the required fee and the rendered priority document.
Te new act also allows applicants an additional six months (certificate fee) or one year (annuity fee) to recover their rights, if they unintentionally fail to pay the respective fees within the statutory period of time (three months from receiving the decision of allowance for the certificate fee) or within the surcharge period of time (six months from the expiry of the due date for the annuity fee). Previously, once the statutory period or the surcharge period expired, the patent was deemed abandoned.
Dual invention/utility model system
Previously, aſter an applicant received an invention patent right following receipt of a utility model patent right for the same invention, the utility model patent right would be deemed non-existent ab initio. Te new act now allows applicants to continuously acknowledge their rights to their utility model patent and invention patent, in effect strengthening the rights of patent holders.
Design
Amendments for the design system may be deemed as being the most substantial to the act. Previously, designs applied only to an entire physical object. Now designs also apply to computer icons and graphical user interfaces, partial designs, derivative designs and set designs. Not surprisingly, the number of filings for design applications has increased this year and applicants, such as mobile device and soſtware design applicants, are taking advantage of amendments to broaden their protection.
the
Invalidation proceedings In the new act, invalidation proceedings were revised to align with the newly established Taiwan IP court proceedings as well as international
www.worldipreview.com
standards. Invalidation can now be filed based on a specific claim or claims, where invalidation decisions are made on a claim-by-claim basis. When more than one invalidation request is filed against a patent, an examiner can now join in on the invalidation proceedings, request for post-grant amendments, if any, and make decisions jointly.
Enforcement of patent rights and damages
One important change in the new act is the reinstatement of punitive damages. When wilful infringement is found, the court may, upon request of the patent holder and on the basis of the severity of the infringement, award damages which are three times greater than the actual losses proved.
Previously, a patent holder was allowed only to request damages equivalent to royalties that would be received from licensing the patent.
Patent term extension (PTE)
Under the new act, an applicant for pharmaceutical or agrichemical patents will not have the minimum two-year requirement for applying for a PTE. Tus, an applicant may realistically apply for a one-day PTE if desired. Meanwhile, the five-year limitation was not changed.
Aſter eight months in force, it is clear that the 2011 and 2013 amendments to the Taiwan Patent Act have been significant. With greater procedural flexibility and design patent protection, the new act has indeed moved closer towards its goal of catching up to international standards. When looking at IP prosecution, we have seen that applicants are making use of the amendments to the new design system and dual invention/utility model system to better protect their rights.
As to post-grant IP proceedings, we expect that patentees and third parties will begin to take advantage of the more internationalised new act and enforce their rights more aggressively in the future. Given the extent of the amendments to the Taiwan Patent Act, the past eight months have been filled with questions. We hope this article makes things a little clearer for those interested in the Taiwan IP industry.
Jessica Chen is the executive senior tech manager of Top Team International Patent & Trademark Office. She can be contacted at:
jessica@top-team.com.tw
Peggy Wu is the executive manager of Top Team International Patent & Trademark Office. She can be contacted at:
peggy@top-team.com.tw
“THE ACT NOW ALLOWS THE APPLICANT CONTINUOUSLY TO ACKNOWLEDGE RIGHTS TO THE UTILITY MODEL PATENT AND INVENTION PATENT, IN EFFECT STRENGTHENING THE PATENT HOLDER’S RIGHTS.”
Jessica Chen is a registered Taiwan patent attorney. She has practised in the IP field since 1996, working with inventors to prepare patent
applications. She specialises in the
semiconductor, display, chemical and material science fields.
Peggy Wu has practised in the IP field since 2000 and has handled a large number of Taiwan and international patent prosecution matters. She is well versed in the semiconductor, chemical, pharmaceutical, method-related fields.
and business
World Intellectual Property Review September/October 2013 107
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