1. Disclosure by a patent applicant in publication(s) shall be included as ground for seeking a grace period, which would apply to both novelty and inventive step requirements.
2. Patent protection shall be expanded to cover plant per se inventions and animal per se inventions.
3. Where a patent application is filed temporarily with a foreign-language patent text, amendment of such foreign-language patent text is not allowed. Relevant provisions are to be added so as to deal with amendments of translation errors.
4. For a patent case filed without priority claim because the applicant unintentionally fails to claim priority, or for a patent case which has become extinguished because the patentee unintentionally fails to pay an annuity, the applicant or the patentee may revive the case.
5. A patent applicant would be allowed to apply for patent division within 30 days from the date of receiving a patent allowance decision issued at the first substantive examination stage.
6. The time limitations for making amendments of invention patent applications shall be abolished. A “final notification” mechanism will be formed. Upon receiving final notification, an applicant can only make amendments during the time period specified in the final notification. For an applicant who plans to effect amendment of claim(s) when responding to a final notification, the amendments thus made shall be accepted only if it meets any of the requirements newly proposed (i.e., the amendment is made to delete any claim on file, to narrow the scope of the claims, to correct an erroneous disclosure, or to clarify an unclear disclosure).
7. The original time requirement for seeking a patent term extension for a pharmaceutical-related or agrichemical-related patent (where a patent cannot be practiced due to application for a permit for more than two years from the patent grant publication date) will be abolished.
8. Patent rights shall be subject to the following limitations: (1) non-public acts made for non-commercial purposes; (2) a bona fine third party’s practice of a patent which has been revived pursuant to Paragraph 2, Article 72, or the third party’s necessary preparations for practicing the patent, which are made before publication of the revival of patent; (3) acts of research, testing or other necessary acts made for purposes of obtaining pharmaceutical inspection and registration permit(s) under the Pharmacy Act or for the purpose of obtaining permits for marketing foreign drugs.
9. The practice regarding revocation actions initiated by the IPO shall be abolished. The grounds for filing cancellation (invalidation) actions against granted patents will be amended. The newly added grounds for filing cancellation actions (such as where a patent division, patent conversion or patent amendment exceeds the scope of original disclosure of a patent, or where an amendment has substantially expanded or altered the originally granted claim(s) of a patent) apply to patent cases granted before the date of implementing the proposed Patent Act amendment. A cancellation action can be filed against a part of the granted claims, and the examination of a cancellation action may be based on discretional investigation. Practices related to combined examination, combined decision, and withdrawal prior to decision on a cancellation case are also clearly stated in the draft amendment.
10. The grounds for seeking compulsory licensing are to be amended as well, for example, where the owner of a plant variety right, when practicing his plant variety right, cannot avoid practicing a bio-tech patent granted to another person, and where, as compared with said bio-tech patent, the above-mentioned plant variety right contains important technical improvement with considerably economic significance.. Compulsory patent licensing shall be allowed for purposing of assisting developing countries and lower-tier developed countries acquire needed pharmaceuticals under patent protection.
11. Subjective elements of patent infringement (intent or negligence) are clearly stated in the draft amendment. “Royalty rate” is added as one of the methods for calculating damage. Where patent marking cannot be made on the patented product, patent marking can be made on the label of the packaging of the product, or can be made in another apparent manner which may cause others to recognize it.
12. Where the same applicant files an invention patent case and a new utility model patent case for the same invention on the same day, the patent applicant need to make a selection prior to issuance of a decision on the invention patent case. If the applicant selects the invention patent cases, the new utility model patent case shall be deemed non-existent from the outset; where the new utility model patent case is selected, the invention patent case will be rejected.
13. Design patent protection will be expanded to cover partial designs, icon designs, GUI designs as well as designs of products supply. Where the same person or entity or more similar designs, an original design patent case and “derivative design patent case(s)” can be applied. "Associated design patent" practice shall be abolished.
The draft amendment shall go through reviews by the Ministry of Economic Affairs and Executive Yuan before it is forwarded to the Legislative Yuan for review. If the review goes smoothly, the draft amendment may be reviewed and passed by the Legislative Yuan in 2010.
Lee and Li
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