The Taiwan Intellectual Property Office (TIPO) has announced that the effective date of the Amendment to the Taiwan Patent Act will fall on January 1, 2013. We summarize the important changes below.
Six-month grace period. A six-month grace period will be applicable to: applicants or prior owner of the right; an invention disclosed in a publication by the applicant (even when it is a commercial disclosure, it is not limited to an experimental disclosure), novelty and inventive step. Derivations from disclosures can be exempted even if they do not overcome the inventive step.
A six-month grace period will no longer be applicable to an invention disclosed due to “research,” referring to a study or improvement for the technical content of an unfinished invention. A grace period will by no means cover any unfinished invention.
Non-patentable and patentable subject matter. Diagnostic, therapeutic and surgical methods for the treatment of humans or animals are all nonpatentable. The non-patentability issue is not limited to methods relating to “diseases”; it may also include methods related to cosmetic surgery.
Partial designs will be permitted and all design applications pending at the time the new act takes effect will be given a three-month period to convert to partial designs, to the extent disclosed by the original disclosure at filing.
Graphical user interface (GUI) designs, icons and designs as a set will also be permitted, as will derivative designs. The scope of a derivative design encompasses identical and similar designs. Associated designs will not be permitted, but all associated designs pending at the time the new act takes effect will be given a three-month period to convert to derivative designs.
Filing documents. No assignment of application rights is required. Foreign languages are not unlimited when used as a foreign text to obtain a filing date. Only 10 languages may be used for this purpose: Chinese, English, Japanese, Korean, French, German, Arabic, Portuguese, Russian and Spanish.
Claim of priority. It is not permitted to fail to identify the priority dates and the relevant receiving office, but there is a 16-month grace period from the earliest priority date to submit priority documents, and these will result in restoration of rights.
Dual application system. Under the dual application system, filing both invention and utility model patent applications for the same creation on the same date by the same application will be permitted. Election of one right is compulsory before a notice of allowance is issued to the invention patent.
A continuation of right converted from the utility model patent to the elected invention patent will not be permitted. When an invention patent is elected, the utility model patent will be deemed to have never existed.
Division of application. Divisional claims may be filed within 30 days of receipt of the notice of allowance for the first examination stage, and it is also allowed to derive divisional claims from another divisional application. But it is not permitted to extend the divisional scope beyond the original disclosure, nor are divisional claims directed to features that have already been allowed permitted.
Restoration of rights. Failure to make payments for publication or annuities will result in the extinguishment of patent rights. Under the new law, restoration of rights is possible when there has been an unintentional failure to make such payments.
Restoration of rights will be permitted within six months after the due date for the patent grant, and within one year after the due date for patent annuities.
Enforcing rights against any bona fide third party exploiting the invention within the original scope will not be permitted if the third party believes the right has extinguished due to failure of payments.
Invalidation proceedings. Invalidation decisions on partial claims are possible under the new act, and there will be no need to revoke an entire patent due to a few invalid claims.
After initiating action, it may also be possible to reduce the claims to be invalidated, but altering or adding claims to be invalidated after initiation will not be permitted.
Damages for patent infringement. Damages may be granted for infringement if the infringer’s subjective intent is proved. It will also be possible to award damages directed to the infringer’s profits, damages for the patentee’s loss of profits, and for reasonable royalties collected from patent licensing.
Punitive treble damages and compensation for diminished business reputation will not be awarded.
The above changes may affect not only applications filed after the implementation of the new law, but also current applications that are still pending after January 1, 2013.
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