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Taiwan’s Legislative Yuan greenlights the amendment to partial provisions of Taiwan Patent Act
E190416Y1 | Apr. 2019(E233) Back    
 Taiwan IPO issued a press release to the effect that Taiwan’s Legislative Yuan passed the amendment to partial provisions of Taiwan’s Patent Act on April 16, 2019.  The amendment will boost the development of Taiwan’s design industry by extending the term of design protection, relax restrictions on divisional applications for invention and utility model patents, and further enhance review efficiency of patent remedies, and ultimately establish a more complete and robust patent protection system.  

 In response to law relaxation and international regulation adjustment and for perfecting patent examination practices, Taiwan IPO proposed the amendment to partial provisions of the Patent Act and successfully had it approved by the Executive Yuan on December 27, 2018 and further submitted to the Legislative Yuan for deliberation.  Highlights of the amended seventeen articles are summarized as follows.

1.  Relaxation of the time limit and applicable scope for filing divisional applications

Under this amendment, a request for division of application may be filed after receipt of the allowance decision of either the first examination or re-examination of the invention patent application, and the timing restriction for filing a divisional application is also extended from the current 30 days to 3 months after receipt of an allowance decision.  The same stipulation shall apply also to utility model patent applications.  

2.  Review efficiency improvement in invalidation proceedings

In order to avoid delay in invalidation proceedings caused by undue and constant submissions of supplementary grounds, evidence, or amendment for invalidation by the parties to invalidation proceedings, this amendment imposes a statutory 3-month time period for submission of grounds for invalidation, and delayed submissions will not be examined.  The amendment also designates a time period during which patentees may request for amendment of claims during invalidation proceedings.  

3.  Stipulation for filing post-grant amendments of utility model patent 

Without going through substantive examination, claims of utility model patents may be amended at any time after grant in an undue manner, which will prejudice a third party’s rights and interests.  To avoid the foregoing situation, the amendment specifies time limits for post-grant amendment and also sets forth that post-grant amendments shall be rendered after substantive examination, instead of formality examination as stipulated currently.  

4.  Extension of design patent term

By reference of the Hague Agreement Concerning the International Registration of Industrial Designs that adopts 15-year term for design patent protection and for reinforcing design patents protection, the amendment extends the term of design patents from 12 to 15 years, which will facilitate the development of Taiwan’s design industry.  

5.  Solution of patent-related records preservation 

Under the current Patent Act, patent-related files shall be kept permanently, and thus there have been a total of more than 2.1 million of patent-related files accumulated and kept for the time being, which has resulted in a problem of insufficient storage space.  Following international practices, the amendment provides that patent-related files or documents should be kept for a specific time period by classification, and those without preservation value may be destroyed periodically so as to solve the file storage space problem.  

 Taiwan IPO’s amendment has removed some regulatory restrictions in the current Patent Act, the relaxation that will upgrade examination efficiency, conduce to enterprises’ patent deployment, and enhance the development of Taiwan’s industrial design.  This amendment will be propagandized in the future to provide to people a clear picture with respect to the details of the amendment.  (April 2019)