TIPO announces draft amendment to partial provisions of Patent Act

　The Patent Act of Taiwan has undergone fifteen amendments since its enactment and promulgation on May 29, 1944 and enforcement on January 1, 1949.  The most recent amendment was announced on May 4, 2022 and took effect on July 1, 2022.  

　In response to the booming development of emerging digital industry and the increasingly applications for diverse digital graphic designs, TIPO formulated the amendment to the design patent system in order to align with international trend towards design protection and also to address local industry needs.  In addition, the amendment draws on judicial practices to refine the mechanism for legitimate patent applicants to reclaim their rights through civil procedures.  The amendment amends 17 articles, adds 2 articles and deletes 1 article.  The key changes are summarized as follows.  

　1.  Expansion of the scope of eligible subject matters of design patents to include image designs utilizing digital technology 

This amendment loosens the restriction that image designs must be applied to “articles”, clarifies the types of implementation of the designs, and revises the scope of applications and rights.  (Article 121, Article 124, and Article 136)  

　2.  Introduction of the system allowing one single application filed for multiple similar designs 
 
Aligning with the Hague Agreement and the practices of the EU and the U.S., this amendment introduces the system that allows the filing for multiple similar designs in a single application, with relevant provisions regarding post-grant amendments and patent invalidation being revised altogether.  (Article 127, Article 129, Article 139, Article 140, and Article 141-1)  

　3.  Extension of the grace period for design patents 

According to this amendment, the grace period for design patents is extended from 6 months to 12 months.  (Article 122 and Article 142)  

　4.  Relaxation of the time limit for filing divisional applications for design patents  

It is currently required that a request for division should be filed before a reexamination decision on the original patent application is rendered.  Under the amendment, the time limit is extended to a period within three months after the date on which an approval decision for the original patent application or reexamination is served.  Corresponding adjustments will also be made with respect to the grounds for unpatentability and for invalidation.  (Article 130, Article 134, and Article 141)  
　　
　5.  Remedy for reinstating the legitimate owner’s right to apply for a patent or patent rights

In practice, disputes over the ownership of the patent application rights or patent rights are challenging for the patent authority to conduct substantive investigation as effectively as the court, and therefore, the grounds for invalidation on such disputes will be removed under this amendment.  Therefore, the amendment provides that such disputes should be resolved through civil proceedings.  Corresponding provisions are added in order to align with the amendment.  (Article 10, Article 35, Article 59, Article 69, Article 71, Article 119, Article 140, and Article 141)  

　6.  Inclusion of transitional provisions 

The amendment includes transitional provisions setting forth the principles for handling the invalidation actions pending before the enforcement of the amendment, the extended grace period for design patents, etc..  (Article 157-5)  (Released 2024.09.11)  
/CCS