Field of Endeavor

The present article relates to the ROC Patent Law, and more particularly to its recent amendments.

Background Statement

A newsletter normally is to internationally spread the news of national law amendments and developments. Nevertheless, it looks dull and appears unnecessary for so many firms to engage in the same work without much added value, which explains why our newsletter is so different in the past. The most recent amendments to the ROC Patent Law are never of minor nature, which arouses our interests in reporting these amendments. Apparently this does not mean our future issues will always relate to new developments of intellectual property laws in Taiwan. Affairs of human life are hard to predict, by which we mean we are not so assured that we are well-equipped in time or idea to issue our newsletter in the way we do in the past in the future. Nevertheless, we will try our best to be as informative and interesting as well as possible.

Summary of Developments

It has been recognized that if there is a system or law which can be internationally unified, the economic one, especially the intellectual property law, should be the first one. Although the human being is great because of dream, such ideal is nevertheless easy to be achieved. More and more harmonization with the international patent practice can be found through amendments recently made to the Patent Law in Taiwan. Nevertheless, different articles can always be found in different countries. Perhaps, if:

1. different words used to provide the same specific practice are regarded to have the same provision;
2. different articles used to stipulate the same matter are regarded to have the same articles;
3. additional articles used to provide a locally specific practice of a minor nature are regarded inexistent;
4. additional articles used to stipulate a locally peculiar practice are regarded harmless to unification of the patent law;
5. some articles providing some practices in some countries, which are not in conformity with the internationally popular practice are regarded to be amended eventually someday into conformity therewith;
6. some currently internationally popular practices are subject to be changed into acceptable ones if convincible arguments are presented; and
7. most importantly, people on earth are all susceptible of being convinced by convincing arguments into reacting according to what they believe,

it appears that we can confidently express that patent laws in countries all over the world have now been unified. Nevertheless, it seems that what we disclose above is merely Utopian and can be foreseen to be practically unavailable through our lives of all possible readers of this article. The simple facts are that patent laws in different countries are different presently and that it would appear to be unnecessary to require all patent laws in different countries be identical in wording or terminology since it already is so much magnificent if patent laws in different countries all over the world are similar in substance.

It is believed that through this recent amendment, the Patent Law in Taiwan is more similar to the internationally popular one, which drives us to write this article.

Brief Items to be Discussed for Presenting Issues We Concern

*Action by co-actor in patent-related matter

*Patent-examining person

*Presumed service

*Presumed novelty

*Simplified filing prerequisites

*Priority-claiming prerequisites

*Priority-claiming requirements

*Inner priority

*Depositing practice

*Applications for the same invention by the same applicant

*Patent of addition

*Early publication

*Examination avoidance

*Amendment before early publication

*Trusting the patent right

*Due payment of issue fee and first annuity

*Substantive requirements for opposition or invalidation

*Patent marking

*Treble damages

*Definition of design

*Requirements for design and associated design

*Drawings specification for design

*Classification of design

*Patent rights of associated design

*Exemption of design patent rights

*Abolishment of patent criminal offence

*Patent-related judicial formalities

*Transition clause

*Effective date of amendments

*Increased official fee

Detailed Analyses

*Action by co-actor in patent-related matter

The newly added Article 13(2) provides “whenever two or more persons jointly proceed a patent-related procedure other than filing a patent application, except withdrawing or abandoning an application, separate filing under Article 32, dividing an application under Article 68, converting or provided otherwise under this Law, all of which shall be co-executed, any such person can separately engage in the remaining procedures provided this shall not apply if there is a representative agreed upon.” By this provision, supplemental briefs, response and paying issue fee can now be effectuated by any or only one of co-applicants in order to avoid unnecessary forfeiture of concrete or potential patent rights.

*Patent-examining person

In the past, the law calls a patent examiner an “examiner.” Since senior patent examining official, patent examining official, assistant patent examining official, statutory hired experts, statutory part-time examining person can all perform the patent examining work, all of them are now called patent-examining persons in order to better secure considerations on conflicts of interests and secret maintenance by enlarging the range of examiner to be properly governed by the law.

*Presumed service

The newly added Article 18bis provides “whenever Office Action or other paper cannot be served, they shall be announced in the Patent Gazette and presumed served at the 30^th day following the publication date of the Gazette.” Currently the office action will be served on the attorney of a foreign applicant if the foreign applicant becomes no more locatable. By this provision, the presumed service is stipulated.

1. Article 20(1) provides the grace period for filing a patent application when the involved subject matter has been disclosed for the purposes of experiment, research or exhibition. The newly added Article 20(3) provides “where the application of proviso in Item 1 or proviso in Item 2 of the first paragraph is claimed, the applicant shall state the fact and its year, month and date upon filing and submit proving documents in the period specified by the patent-dedicated office.” It is intended that such provision will make it clear and indisputable when the disclosed event happens.
2. The newly added Article 20bis provides “an invention filed for a patent and having the same contents with those disclosed in specification or drawings accompanying an invention or utility model patent application prior filed but published after it is filed shall not be granted an invention patent provided this limitation shall not apply if its applicant is the same with the applicant of the prior filed invention or utility model patent application.” This provision is derived and developed from the old Article 20(1)(2) to clearly establish the following practices:
1. For a later filed application having identical contents with those of a prior filed but not yet published application of another, it is presumed to have lost the novelty to order to thoroughly implement the first-to-file principle.
2. For the prior and later filed applications having the same specification or drawings by the same applicant, if the later one has different claims from those of the prior one, there will involve no double patenting.
3. The word “published” rather than “granted” is used since “published” can include situations of earlier publication and examined publication with the former being newly introduced by this amendment.

*Simplified filing prerequisites

Article 23 is amended to read “an invention patent filing date shall be the date on which official fee and application form, specification and required drawing provided in the preceding Article are completely submitted….” Such amendment is advantageous in various circumstances. As an example, if an employee is dead, quits his job or cannot be located so that oath and assignment are unavailable, the applicant might lose the desired filing date. By this amendment, oath and assignment can be submitted belatedly.

*Priority-claiming prerequisites

Article 24(3) is amended to read “a foreign applicant whose country of origin does not mutually recognize the priority claim with the Republic of China can still claim priority under the first paragraph if it establishes residence or business office in the territory of a mutually favored country.” According to the old law, a foreign can claim priority in this country only when its country of origin admits the priority claim from national of this country, which is not in conformity with the national treatment principle as provided in articles 2 or 3 in the Paris Convention. Accordingly, the principle set out in Article 2 of TRIPs of WTO that any member shall follow Articles 1 through 12 of Paris Convention is adopted so that under this amended paragraph, any one who establishes residence or business office in the territory of a mutually favored country is eligible for priority claim.

*Priority-claiming requirements

Article 25(1) is amended to read “an applicant claiming priority in accordance with provisions of the preceding Article shall make such claim at the same time upon filing application, and state in the application form the country accepting the corresponding foreign application, its filing date and its application number, provided that the application form shall state the reason if the application number cannot be known.” By this amendment:

1. According to the past practice, the application form shall state at the same time the country accepting the corresponding foreign application, its filing date and its application (or serial) number in order to successfully enjoy the priority right. Nevertheless, it never is seldom to be found that when there are several priorities to be claimed simultaneously, in order to enjoy the first priority, the application must be filed before particulars, especially the application number, of the rest priorities can be practically available. The applicant is thus forced to lose one or more of the rest priorities. Since the indication of the filing particulars is merely to identify that a part of or the whole contents of the priority-claiming application are the same with those of the priority-claimed application, such formality should be able to be belatedly rectified without incurring the price of the applicant’s losing the priority right, which will thus become a humanized measure.
2. Nevertheless, the applicant should submit evidence showing that the belatedly submitted application is exactly the one claimed upon filing.

*Inner priority

The newly added Article 25bis provides “an applicant may claim priority from invention or creation disclosed in specification or drawing in a prior filed application for a later filed patent application based on the prior filed invention or utility model patent application in this country provided this provision shall not apply in any of the following cases:

The priority date claimed under this Article shall not be earlier than the effective date of amendments made to this Law on October 4, 2001.”

The new article provides what is well-known as inner priority. The first paragraph stipulates the condition and scope of the application on which the priority is to be based. What the item 4, ‘the prior application has been examined,’ provides is not readily apparent and is referred to represent that in addition to having been unfavorably examined, the applicant does not seek any relief for the prior application. Then, after the time period in which the applicant should seek relief, the prior application will become an abandoned application, which is ineligible for being priority-claimed. If the result of the examination is favorable, i.e. an action allowing the application is issued, there will be some discrepancy in that there must be a time difference between the time the prior application is examined and the time the prior application will be published. Accordingly, if the published time and the filing date of the prior application do not have a time span longer than 1 year, why a later filed application cannot claim priority from the prior filed application? Thus, this item is a problematic statute and should be further amended, e.g. to read as “the prior application has been filed more than one year and examined.”

By the same token, what the item 3 provides, i.e. “the prior application is one changed into a divisional application according to provision of the first paragraph of Article 32 or converted according to provision of Article 101,” is also problematic in that after a divisional application is divided and claims priority from a parent application having been filed for not more than one year, if the parent application becomes abandoned somehow, why a later filed application cannot claim priority from this divisional application? Similarly, if the converted application is converted from a prior one having been filed for not more than one year and the prior application becomes abandoned somehow, why a later filed application cannot claim priority from the converted application? Accordingly, this problematic statute should be further amended, e.g. into reading as “the prior application is one changed into a divisional application according to provision of the first paragraph of Article 32 or converted according to provision of Article 101 and enjoys an earliest filing date of having been more than one year.”

What Article 25bis(2) provides, i.e. “the prior application in the preceding paragraph shall be deemed withdrawn after 15 months from the following date of filing,” is also problematic in that the parent or prior application needs not be identical to the later filed one. Specifically, if the prior application contains independent patentable subject matter of that included in the later filed application, why there does exist any problem of double patenting or duplicate publication so that the prior application shall be deemed withdrawn? Accordingly this paragraph should be again amended, e.g. to be headed by “if having the same subject matter with that of a later filed application, the prior application in the preceding paragraph….”

Article 25bis(3) provides “the priority claim shall not be withdrawn after 15 months following the date of filing the prior application.” The rationale for this added paragraph is that whether the priority is to be claimed belongs to the rights of the applicant and relates not merely to the priority-claiming application but also to the prior filed application. Accordingly, whether the priority is to be claimed should be determined before the prior filed application is published or examined in order to secure the procedural stability. This reasoning is something queer in that whether the applicant will withdraw the priority claim for the later filed application is irrelevant to the prior filed application. Further, withdrawing the priority claim from the later filed application will make no influence on any procedure of the prior filed application and should only have relevancy on the later filed application. Accordingly this paragraph has digressed from the subject of the matter. Specifically, if this paragraph is to be stipulated, it should read “the priority claim shall not be withdrawn after the examining person is proceeding the substantive examination on the later application,” since its patentability is closely related to the effective filing or priority date of the later filed application.

What Article 25bis(4) provides, i.e. “whenever the later filed application claiming priority under the first paragraph is withdrawn within 15 months following the date of filing the prior application, the priority claim shall be deemed withdrawn simultaneously,” is something repetitive and funny since the 15-month period has been provided in the preceding paragraph and whether the priority claim is withdraw will make any difference to any existing application if the later filed application is withdrawn.

The provision in Article 25bis(5), i.e. “where two or more priorities are claimed in an application by an applicant, the priority period shall be counted from the date following the earliest priority date,” is also problematic in that even if the earliest priority date is past due, there still exists a legal priority period counted from the other priority date. Accordingly, if it is necessary to provide such paragraph, it should read as “where two or more priorities are claimed in an application, the respective priority period of a specific priority shall be counted from the date following the respective priority date.”

*Depositing practice

By the amended Articles 26(1) and (2), it is made clear that an invention patent related to microorganism in fact means one related to microorganism variety or utilization of microorganism. Furthermore, in the new law, the applicant can obtain a filing date by stating in the application form depositary, deposit date and deposit number, and belatedly submit the deposit-evidencing document.

Article 26(3) newly provides “the limitation of domestic deposition prior to filing in the first paragraph shall not apply if it is stated upon filing that deposition has been made in a foreign depositary recognized by the patent-dedicated office, and evidencing document of depositing in the domestic depositary designated by the patent-dedicated office and evidencing document issued by the foreign depositary are submitted in the period prescribed in the preceding paragraph.” According to the Intellectual Property Office, publicness, reproducibility and activity stability of a microorganism invention must be considered simultaneously. In addition, a live microorganism cannot be fully described through specification and drawings so that the invention is not patentably completed if it is not deposited in a depository before filing. Nevertheless, although the microorganism has not been domestically deposited prior to being filed in this country, the application can still obtain a filing date as long as the microorganism has been deposited in a foreign depositary. By such provision, the old practice which requires that the microorganism must be domestically deposited again before filing even if it has been deposited in a foreign depositary and that the priority period cannot be excused by an insufficient time of additionally domestically deposited can be alleviated thereby. Certainly, the domestic deposition must be duly made in a later time.

*Applications for the same invention by the same applicant

Amended Article 27(1) changes the clause, “whenever separate applications are filed by two or more parties for the same invention…” in the old law into “whenever two or more patent applications are filed for the same invention, only the earlier or earliest filing applicant shall be granted an invention patent, provided this provision shall not apply if the later filing applicant claiming a priority date earlier than the filing date of the earlier filing applicant.” Although the search system in this country has been improved somehow, the examination standards or fairness are not so perfect. Accordingly some few persons try to file the same invention or creation for two invention patents, an invention patent and a utility model patent or two utility model patents at the same time for increasing the probability of obtaining a patent. This is a harsh problem for the old law in that it only provides ‘… by two or more parties…’, which means the old law does not have a direct provision to be based for rejecting the redundant or repeated one application.

*Patent of addition

All provisions relating to patent of addition have been deleted. Such deletion is clarifying in that according to the old law, a patent of addition application:

1. can be filed at any time after the parent application is filed and before its patent rights expire;
2. enjoys free annuity but expires with the parent application (even if the later inadvertently fails to pay the annuity);
3. .cannot claim priority from the parent application; and
4. has patentable requirements independently judged of the parent application by which we mean the parent application can be legally cited to reject the patent of addition application.

Such kind of system falls far behind the ranks and is cruel and useless. Accordingly it appears that there exists nothing to be relented for such system to be phased out. Nevertheless, there may leave some room to be regrettable that such system is not changed into a system similar to Continuation-In-Part system in the US.

*Early publication

Article 36bis basically provides the early publication system, which is quite common in the world so that no provision or analysis will be provided here. Nevertheless, it is to be noticed that this system in only applicable to the invention patent application but not to the utility model patent application. The Intellectual Property Office explains that a utility model creation:

1. has a lower technical level: this is unnecessarily convincing since no one in this world can exactly tell whether a patentable subject matter is an invention (of an invention patent) or a creation (of a utility model patent) since no one alive can draw the line of demarcation for convincibly judging whether the technical level of the patentable subject matter is higher or lower;
2. has a shorter product life period: this also need not necessarily true in that it is easy to so believe if we can believe that a good thing need not be popular;
3. is frequently filed by a domestic person who normally tends to have a quick definite answer as to whether the subject matter filed for a kind of patent is patentable: it is somewhat ridiculous and straggling to collect it into consideration whether some kind of patent category is filed by the domestic or foreign person. Furthermore, whether an issue should have a quick answer should have a definite answer which is independent of whether the person involved is domestic or foreign;
4. is examined in a relatively quicker manner in practice: we are of the opinion that if this is true, the extent of quickness is of a tiny nature; and
5. should not put into the earlier publication system according to the industry in the public hearing: we are of the opinion that if this is true, it is partly because the personnel in the Intellectual Property Office terrify the industrial representatives in the public hearing that if this country does not adopt the earlier publication system, she will be regarded as one which is underdeveloped or dropping behind the world tide since it is quite possible that our countrymen always want to have a quick definite answer for all kinds of patent applications.

Article 36ter provides the substantive examination for the invention patent application, which is also well-understood so that no more introduction is deemed necessary. For divided or converted applications, it deserves to note the period for requesting substantive examination in paragraph 2, which provides “for a divisional application changed according to provision of the first paragraph of Article 32 or an invention patent application converted according to provision of Article 101, failing to follow the period in the preceding paragraph, the substantive examination can be made to the patent-dedicated office within 30 days from the following date of division or conversion.”

Article 36quater stipulates formalities of requesting the substantive examination. It is to be noticed that in addition to the deposit certificate submitted upon filing, the viable certificate is required upon petitioning the substantive examination. The fourth paragraph provides “upon petitioning examination, the applicant for an invention patent related to new variety of microorganism or utilization of microorganism shall submit the viable certificate issued by the depositary; if the examination is petitioned by a person other than the invention patent applicant, the patent-dedicated office shall notify the invention patent applicant to submit the viable certificate in three months.”

Article 36quinquies provides the preferential examination. The first paragraph provides “if an invention patent application is commercially practiced by a non-patent applicant after earlier publication but before publication after examination, the patent-dedicated office may preferentially examine it upon petition.” Accordingly the applicant or patentee can curb the infringement action at an earlier date through the confirmation that the subject matter it files for a patent is patentable. This makes it clear that the applicant can request or the Intellectual Property Office may allow the preferential examination at only one situation, i.e. if the invention patent application is commercially practiced by a non-patent applicant after earlier publication but before publication after examination.

Article 36sexies provides the provisional protection, which is very similar to the international practice also. Specifically, there are two kinds of persons, i.e. who still continues to commercially practice the invention after notification and before publication after examination and who knowing an invention patent application has been published still continues to commercially practice the invention before publication after examination, against whom the patentee can ultimately claim damages. This compensation claiming right shall lapse where the claimant fails to so exercise within two years from the date following the irrevocably examined date.

Article 36septies stipulates the applicable date of the earlier publication system, which shall be applicable only to invention patent applications filed one year after amendments made on October 4, 2001 to this Law have become effective, i.e. October 26, 2002.

*Examination avoidance

Amended Articles 37(1)(1) to 37(1)(3) adjust the range of the examination avoidance through provisions of “an examining person shall avoid examining an application under any of the following circumstances:

3. Where the examining person or its spouse, former spouse or betrothed is related to the applicant as a joint obligee, joint-obligor, or a reimbursing debtor so far as the application is concerned.”

Amended Articles 37(1)(1) and 37(1)(3) include in the name list of examination avoidance the examining person himself or herself to more exactly reflect the real intention of the original provision.

In order to reflect or moderately loosen the strictness of the complexity of economic involvement in the modern society, the relative exclusion is changed from “up to the fifth degree consanguinity” into “up to the fourth degree consanguinity.”