*Amendment before early publication

Article 44bis(2) provides that “the applicant may supplement or amend specification or drawings within 15 months from the following date of filing the invention patent application.” Under the early publication system, all invention patent applications are to be published after 18 months from the filing date or the priority date. According to this provision, the applicant may supplement or amend specification or drawings within 15 months from the filing date or the priority date (Article 44bis(5)) without changing any subject matter (Article 44bis(4)). The 15-month period is set due to the fact that the printing procedure will normally cost about 3 months in order to ensure that what are supplemented or amended is included in the publication text in time. Some applicants may like their specifications are nearly perfect before published. Nevertheless, since what are supplemented or amended cannot introduce in the specification any new matter, it appears most of the applicants would like to wait until a response to an office action for supplementation or amendment.

Article 44bis(3) provides that “after 15 months from the following date of filing an invention patent application, the applicant may supplement or amend specification or drawings only in the following various dates or periods:

1. At the same time of petitioning substantive examination;
2. Within three months from the following date of receipt of service of the notification that the application proceeds with substantive examination where the substantive examination is requested by one other than the applicant;
3. Within the period of response to the pre-action notification of the patent-dedicated office;
4. At the same time of requesting reexamination or within the period within which the reexamination briefs may be supplemented;
5. Within the period for responding the opposition;
6. Within the period for response notified by the patent-dedicated office having ex officio examined.”

Only under any one of the above situations, can the applicant petition to supplement or amend the specification or drawings, after the above-described 15-month period, in order to free the normal examination procedure from being interfered through repetitive supplementations or amendments. Through provisions in this paragraph, it is clear that generally speaking, after the statutory or specified period in the Intellectual Property Office (IPO) or the case having left the IPO, e.g. through appealing the IPO action, there is no longer opportunity to supplement or amend specification or drawing. Accordingly it is important that the applicant has been assured that claims has been properly amended in an acceptable scope at the last opportunity of responding the office action or official letter.

This rule is clear. Nevertheless, it is not seldom found that new rejection reason or new cited reference is raised after the case leaves the IPO either by the examiner in responding the appeal briefs or the expert invited by the appealing authority in expressing its opinions on the issue with which it is assumed to solve. Under such circumstance, provisions of Article 44bis(3) are no more equal or justified. Accordingly if new rejection reason or cited reference is possible, necessary supplementations or amendments for overcoming the new rejection reason or new cited reference after the case leaves the IPO should be allowed in order that the applicant and the IPO are equally armed.

Article 44bis(4) provides “supplement or amendment made according to the preceding three paragraphs shall not change subject matter of an application; in addition thereto, if submitted after publication of the examined invention application, such supplement or amendment may be entered only under any of the following circumstances:

3. Unclear statement.”

This paragraph makes it clear that after the application has been published after examination, the conditions on which supplement or amendment can be made are identical to those for a granted patent. According to the IPO, such measure is exercised for the purpose of maintaining the stability of the involved applications.

*Trusting the patent right

Article 59 provides “an invention patentee assigning, trusting or licensing to practice its invention patent right to another shall have no locus standi against a third party unless recorded with the patent-dedicated office.” Many articles relating to the utilization of patent rights, through this recent amendment, include therein the trusting clause in response to the legislation of the Trust Law, which also make it necessary to amend some wording in the articles. For example, Article 63 provides “all parties to an assignment or trust of an invention patent right shall execute an petition accompanied by an evidencing document before the patent-dedicated office to issue a replacing certificate.” The wordings, evidencing document, instead of that of ‘agreement’ in the old Law, are used in order to reflect the fact that trust can occur through heirship or court decision.

*Due payment of issue fee and first annuity

Article 70(2) newly provides to make it clear that “the patent right shall be deemed ab initio inexistent where the first annuity and the issue fee are not paid before the grace period expires.”

*Substantive requirements for opposition or invalidation

Article 72(2) is amended to delete the bracketed word, “examined opposition or invalidation proceedings in the preceding paragraph having been [irrevocably] dismissed, no one shall initiate further invalidation proceedings by same fact and same evidence.” The rationales are set out as follows:

1. It is not seldom found that the invalidation system is used to delay the litigation proceedings. Accordingly, in the original provision, another or more invalidation proceedings of same fact and same evidence can still be repetitiously initiated as long as the previous invalidation proceedings are not irrevocably dismissed. As such, many invalidation proceedings can be initiated and must be examined by the IPO. Furthermore, whenever there are any invalidation proceedings, the infringement case pending before the court will be suspended, which means that the patentee will possibly unable to claim its rights in time. Nevertheless, this amended paragraph does not make it clear how the IPO will treat the later initiated invalidation cases which are initiated before the most previous invalidation case is dismissed? Will the IPO suspend the examination for these later initiated invalidation cases until the examination result of the most previous invalidation case? Once the most previous invalidation case is dismissed, will all the later initiated invalidation cases be automatically dismissed by analogously applying this paragraph? Is this lawful? Specifically, is it necessary for the IPO to examine all the invalidation cases which are initiated after the most previous invalidation case is initiated but before it is dismissed?
2. According to the IPO, in fact, once an opposition or invalidation application has been dismissed, whether irrevocable or not, another invalidation case of same fact and same evidence will deserve no examination since if the previous opposition or invalidation case of same fact and same evidence were dismissed, there will exist no room for said another invalidation case to have a different examined result. Nevertheless, this is theoretically correct only when the examination made in the previous opposition or invalidation case is correct or perfect.

*Patent marking

Article 83(2) is amended to include the underlined portion as “for an article not patented or not manufactured by a patented method, the advertisement, publication, article or its package shall not be affixed thereto patented words or a mark capable of misleading other to take it as patented.” According to this new provision, an advertisement for the patented article or method or a publication mentioning about the patent is deemed to have similar functions as the patented article itself or its package so that all of them should be equally applicable under this provision.

*Treble damages

Article 89(3) provides increased damages as “the court may award compensation in the preceding two paragraphs over the loss amount, depending on the infringing circumstance if the infringing act is intentional, provided the awarded compensation shall not exceed three times of the loss amount.” This amendment corresponds to treble damages in the US and is made in response to the repeal of the criminal provisions in Articles 123, 124 and 127 regarding the invention patent.

*Definition of design

In Article 106(1), ‘the term "design" shall mean a creation through eye-appeal in respect of an article’s shape, pattern or color or their combination,’ the underlined clause is included to emphasize what a design is seeking for. According to the IPO, what eye-appeal is referred to refers to a feeling one has through one’s eyes upon being externally stimulated. Media reflecting other sensing functions, e.g. senses of hearing or touch are still excluded from design protection.

In Article 106(2), ‘the term "associated design" shall mean a creation derived by the same person from his original design and constituting similar thereto,’ the word ‘original’ is used instead of ‘another’ in the old law in order to more accurately depict the intended meaning of this paragraph.

*Requirements for design and associated design

Article 107(1) is amended to read “any design susceptible of industrial application and having none of the following cases may be applied under this Law for a design patent:

2. It has been displayed in an exhibition prior to filing, provided this limitation shall not apply if a design application therefor has been filed within six months from the date of opening of such exhibition sponsored or approved by the government.”

This paragraph is amended to reflect:

1. The design patent stresses upon the utilization in the industry. Since upon implementing the creation, the mass producing machine tool is necessary, upon creation, the industrial method and mass-producibility must be considered in order that identical manufactures in quantities can be produced later;
2. The proviso of Article 107(1)(1) is added since publication or utilization for research or experimental purposes are also applicable to a design; and
3. A design can also be displayed in an exhibition so that the grace period for exhibition should also apply to the design.

Article 107(3) is amended to read “the same person shall file a similar design for an associated design patent without limitations of the preceding two paragraphs, provided not file to obtain an associated design patent if there has appeared in a publication, been put in public use or been displayed in an exhibition an identical or similar design prior to filing of the original design.” By such amendment, it is to be made clear that:

1. An associated design can merely confirm the scope of the original design so that before the associated design is filed, even there appears a similar design, the associated design can nevertheless be patented;
2. If before the filing of the original design, there already published or displayed in an exhibition a design, regardless of the same person or other, identical or similar to the associated design, the associated design is no more patentable. This is provided in the proviso for clarity.

*Drawings specification for design

Article 112(3) newly provides “drawings specification in the first paragraph, in addition to recitation of the claim, shall state the use of the article and the creative feature of the design article for enabling one skilled in the art to understand its contents and thus practice.” This paragraph comes from Article 47(1)(5) of the Enforcement Rule and is provided to ensure that whenever the subject matter of a design cannot be identified from the drawings specification, the literal statements of the use of article and the creative feature will enable the examiner to classify and search the design and one skilled in the art to understand its contents and then to practice.

*Classification of design

In the past, a design application must be designated by the applicant with a local class in a classification list issued by the Ministry of Economic Affairs for the purposes of prior art search. In practice, nevertheless, this is not internationally popular. Furthermore, according to the IPO, the design article classification should be ex officio designated by the IPO according to the ‘Article Classification for International Industrial Design’ which is to be adopted by the IPO recently and is normally updated from time to time by the WIPO.

Probably the most interesting issue regarding this topic is if a design can be inherently applied to two different classes, e.g. a toy car and a real car, how the design can ultimately protect? The practice in this country, which requires the drawings specification to include literal statements of the use of article and the creative feature is normally used as a base to classify into which class the design article should fall. It is a kind of challenge to provide the literal statements of the use of article and the creative feature without clearly mentioning or hinting what the claimed design really is. Nevertheless, the IPO will often require to supplement descriptions in the drawings specification to make it clear what the design exactly is if it is not satisfied with and cannot judge the real class from the original statement in the drawings specification.

For a design specification in the some countries, e.g. the US and the UK it is unnecessary to describe any feature of the design. It should or might be true that in those countries, the design application is examined under a specific class. Nevertheless, it appears to make no difference as to under which class it is examined after the design application is allowed. Further, after the design application is granted, it seems that the design patent can protect whatever articles which embody the design, which is thus different from what is occurring in this country.

*Patent rights of associated design

Article 117bis newly provides that ‘the rights of an associated design patent subordinate to the original design patent rights shall not be claimed independently and not extend to a similar scope.

Where the original design patent rights are cancelled or distinguish, the associated design patent rights as well shall be cancelled or distinguish.”

This article is added to make it clear that:

1. It has been declared that an associated design is to confirm the protecting scope of the original design. Specifically the associated design is not an independent patent and is used to more concretely express how the similar scope of the original design is? Therefore, whenever the patentee desires to claim its rights, the original design must certainly be a base. In other words, the associated design does not have its independent similar scope.
2. Whenever the original patent rights are cancelled or distinguish, the associated design will lose its base on which it is adhered.

*Exemption of design patent rights

Article 118(1) is amended to read “effect of a design patent right shall not extend to any of the following various circumstances:

1. Where the design is practiced for research, education or experimental purpose without a profit-making behavior;
2. Where the design has been used in this country or necessary preparations thereof have been completed prior to filing, provided this provision shall not apply where the design has been learned within six months prior to filing from the patent applicant who declares to reserve its patent right;
3. An article having been existent in this country prior to filing;
4. A vehicle or its device merely transiting through the border of this country;
5. Where a licensee of a patent right which is granted to a non-entitled patent applicant and is canceled by invalidation by the patentee has in good faith used the design or completed necessary preparations therefor in this country; and
6. Where, after a patented article manufactured by the patentee or through his consent is sold, the article is used or re-sold where aforementioned manufacture or sale shall not be limited to happen in this country.”

Articles 118(1)(1), 118(4) and (5) are newly added to reflect that these provisions should also be applicable to the design patents as the invention patents or utility model patents do.

By the same token, Article 118bis is newly added to regulate the royalty of cancelled design patent right in a way similar to that applicable to the invention patent or utility model patent by the following sentence, “the licensee in Items 5 in the preceding article, still practicing the design after said patent right is cancelled through invalidation, shall pay the patentee a reasonable royalty from the day upon receipt of the written notice from the patentee.”

*Abolishment of patent criminal offence

All criminal or penal provisions relating to the invention patent are abolished through the following reasons set out by the IPO:

1. Since an invention relates to a high level creation using the natural rule, whether an article does infringe the invention patent right of some one involves complex judgments of special technique by experts whose opinions nevertheless need not be the same so that it is controversial upon making such decision. Such reason in fact is not a reason in that whether a task is complex or difficult should not relate in any way to the conclusion as to whether a specific provision having in its nature nothing to do with the task of infringement judgment. Specifically, theoretically, the facts that opinions of experts are different and/or controversial should be solved by first trying to improve the quality of experts, the criteria of infringement-judging standards and effective communication among experts. If these efforts have not been tried or made, it is believed to be imprudent or arbitrary to immediately reach the result of abolishment of the penal provisions for the invention patent simply because an easy or correct judgment on infringement is never readily available.
2. Although under the present provisions for the invention patent, only the fine can be found. Nevertheless, in practice, the patentee normally urges the prosecutor to exercise the investigation power to search or seize the suspect or defendant. Even if the complaint is eventually dismissed or adjudicated innocent, the reputation and/or property of the suspect or defendant have been hurt, which will adversely influence the industrial development. This is a reason but is not a good one since if it is a good one, why the old laws provided fine and imprisonment in the past? It is reported that one third of the world countries do not maintain the criminal provisions in their patent laws and many of them belong to developed countries or ones having been developed to some extent. As a matter of fact, it is convincible to take that the patent law is an economic code which regulates the economic behaviors of the human society which should be solved by economic measures rather than criminal measures. In addition, if this is a viable reason, why such reason is inapplicable to the utility model which is still to apply the criminal provisions.
3. There are some noises or voices that the penal provisions for the invention patent are abolished in that a lot of invention patents are obtained by foreign nationals. By such abolishment, nationals in this country are better protected. This might be true in view of the fact that some powerful or key invention patents are owned by the foreigners. Nevertheless, in practice, it is more common to find that domestic patent owners use the penal provisions as a measure to force the potential infringer to accept or settle under the terms the patent owner offers. In addition, as a result of the economic booming in the past and the technological advancements in recent decades, more and more inventions patents are obtained by domestic applicants. Accordingly the reason set out in this item is not so convincing too.

*Patent-related judicial formalities

Article 131 is amended to read “except Article 130, any offense prosecution under this Chapter shall be instituted upon complaint.

Judge, prosecutor or judicial police taking it necessary to search or seize through suitable reasons shall exercise in a proper way under the proportional principle by paying attention to reputation and property rights of defendant or suspect.”

Article 131(2) is amended to substitute ‘the infringement assessment report’ normally issued by any of some designated organizations in the old law with ‘the comparison analysis report’ prepared anyhow even by the plaintiff, and to dispense with the requirement of written notice requesting preclusion of the infringement by the infringer. Such amendment, according to the IPO, is to make them clear:

1. That in the initial period when the old law began to be effective, the judicial authorities did always require the infringement assessment report be issued by any one of the designated special organizations for infringement assessment. Those special organizations nevertheless do not often understand the patent law correctly or properly and more than a half of them is unwilling to or cannot issue an infringement assessment report appropriately. After a certain period after the old law becomes effective, the IPO accordingly announced that the required infringement assessment report needs not be issued or prepared by those special organizations, some of which ask an over-high fee while another some of which takes so much time to only be able to perform the assessment report beyond the statutory 6-month complaint period. Nevertheless, such announcement presents no weight before the judicial authorities in that the court or the prosecutor who believe that they themselves having no technological background have no ability to investigate whether there is an infringement only believe or accept the infringement assessment report which is prepared by any one of the designated organizations other than any one else. It is easy now to find out the dilemma in which we are upon proceeding the litigation.
2. That whether there is a patent infringement involves in the construction of the claim scope and the comparison and/or judgment of technique and/or expertise. Such assessment report is originally used to assist the prosecutor in understanding the relationship between the patent in dispute and the suspect counterfeiting article, to supplement the possible insufficiency of the complaint papers, to preclude the patentee from abusively complaining, and to let the suspect infringer prepare how to defend. All these purposes, nevertheless, could be satisfied if the comparison analysis report prepared by patentee has already made clear the relationship between the involved patent and the suspect infringing article. By such provision, the rights of complaint of the complainant conferred by the constitution will not be unduly limited.
3. Furthermore, in the old law, it is required that before the patentee can initiate the complaint, it must first send to the potential infringer a written notice requiring cease and desist of the infringing action. Nevertheless, upon receipt of such notice, in practice, the potential infringer normally immediately escapes or tries its every efforts to destroy all possible evidences so that it is hardly possible for the patentee to further investigate the matter. Accordingly such prior written notice is never a reasonable provision and should be made optional by the patentee to consider, e.g. whether to cause a situation capable of claiming treble damages.

As a result of the above reasoning, Article 131bis(2) newly provides “court or prosecutor entertaining a patent litigation case may entrust the preceding organizations to assess” to make it clear that the designated special organizations are merely selectable but not mandatory ones.

*Transition clause

Article 134 is amended to provide “the subsequent procedure for patent applications pending until this amended Law becomes effective shall be dealt with under the effective amended provision.

For a design patent whose patent rights still subsist at the date when the protocol of World Trade Organization takes effect in the ROC-governed region, its patent term shall be dealt with under the effective provisions amended on May 7, 1997.”

Article 134(2) is amended to clarify:

1. how to apply articles respectively amended on January 21, 1994 and October 4, 2001;
2. The patent protection begins for 15 years from the publication date for applications granted before January 23, 1994, but begins from the publication date for 20 years from the filing date for invention patent applications granted after that critical date. Nevertheless, Article 33 of TRIPs of WTO stipulates that “the term of protection available shall not end before the expiration of a period of twenty years counted from the filing date.” Also, Article 70 of TRIPs of WTO provides that “except as otherwise provided for in this Agreement, this Agreement gives rise to obligations in respect of all subject matter existing at the date of application of this Agreement for the Member in question, and which is protected in that Member on the said date, or which meets or comes subsequently to meet the criteria for protection under the terms of this Agreement…” Accordingly, for protecting the invention patents which effectively subsist when this country joins WTO, the protection periods for all these invention patents are extended to enjoy a term of 20 years from their filing dates.

Article 134(3) is newly added to make it clear that:

1. through the amendment on January 21, 1994, the protection period of a design has been extended from 5 years from the publication date to 10 years from the filing date. Furthermore, by May 7, 1998 amendment, the effective date of which has not been designated yet, the protection period for a design patent is further extended from 10 years from the filing date to 12 years form the filing date.
2. for all design patents now existent, they are all applicable under the old law effective from January 23, 1994 since all design patents under the applicable law before this critical date had expired. For enforcing the spirits of the TRIPs provisions, it is thus expressed that for all design patents which effectively subsist when this country joins WTO, their protection periods shall apply the provision amended on May 7, 1998.

*Effective date of amendments

Article 139(2) provides “the date articles 21, 51, 56, 57, 78 through 80, 82, 88, 91, 105, 109, 117 and 122 amended on May 7, 1997 and Articles 24 and 118bis amended on October 4, 2001 of this Law take effect shall be designated by Executive Yuan.” All these articles are amended to reflect the necessary or desired changes so that they should take effect from the date this country joins the WTO, which is to be designated by the Executive Yuan, i.e. January 1, 2002.

*Increased official fee

Official fees are substantially increased to be effective from January 1, 2002. The following are some of them:

1. For an invention patent application having under 50 pages of specification and drawings, the filing fee is NT$6,000 with another NT$500 for every another 50 pages but will be deducted for NT$500 if electronically filed or filed with the specified two-dimensional bar code patent sheets;
2. From the date the early publication system takes its effect, i.e. October 26, 2002, in this country, the filing fee for an invention patent application will be NT$2,000 deductible for NT$500 if electronically filed or filed with the specified two-D bar code patent sheets while the petition for substantive examination will cost NT$6,000 with another NT$500 for every another 50 pages of specification and drawings;
3. For reexamination (responding to the first office action), the requesting fee is NT$6,000 with another NT$500 for every another 50 pages of specification and drawings;
4. For amending the specification or drawings, the fee is NT$2,000;
5. For earlier publication before the statutory early publication timing, the requesting fee is NT$1,000;
6. For filing a utility model application, the filing fee is NT$4,500 with another NT$500 for every another 50 pages of specification and drawings but will be deductible by NT$500 if electronically filed or filed with the specified two-D code patent sheets;
7. For reexamination for a utility model application, the petitioning fee is NT$4,500 with another NT$500 for every another 50 pages of specification and drawings;
8. The filing fee for an invention patent application or a utility model application will be deductible for NT$500 if the front page and abstract of the specification are provided with English translation;
9. For filing a design or an associated design, the fee is NT$3,000;
10. For reexamination of a design, the petitioning fee is NT$3,500;
11. For petitioning an interview, the fee is NT$2,000;
12. Annuities are NT$2,500 for each year among the first to third years; NT$5,000 for each year among the fourth to sixth years; NT$10,000 for each year among the seventh to ninth years; NT$20,000 for each year among the tenth to twentieth years; and NT$40,000 for each year from the 21^th year.

1. In this globalized era, things or thinking tend to be uniformed or standardized with diversification. As a branch of the economic norms, the patent laws all over the world tend to be harmonized. Through amendments made on October 4, 2001, Taiwan Patent Law more approaches the international tide, e.g. the adoption of the early publication system and inner and outer priorities. Nevertheless, we are not certain whether the international tide is correct? As an example, we are uncertain whether the provision of the request for substantive examination for the invention patent is good? Under the US practice, the utility applications are automatically examined without the necessity of request of substantive examination. Perhaps some organization should find out the statistical data as to what is the percentage of applications which are filed without substantive examination? What is the percentage applications become abandoned because there is no substantive examination requested therefore? What is the average time for the invention applications to be requested for substantive examination. All these and other data will help understand whether the provision of early publication is good. Before this problem is answered, we hope the US will maintain its adherence to the present practice without the necessity of requesting the substantive examination for the purposes of comparisons, in order that the patent system all over the world can take the correct step when the opportunity arises.
2. As a less advanced country in the patent world society, the provisions of some articles in recent amendments are problematic. We hope through our criticism, the IPO will so notice soon, especially in view of the fact that a newly amended patent law draft with 73 articles of the present patent law recently amended on October 4, 2001 has passed the meeting in the Executive Yuan to be sent to the Legislative Yuan. We are not so patriotic as to have or spend time to review and discuss or debate whether the draft is soundly prepared. Nevertheless we hope the IPO will alert we will criticize again if the draft becomes the law but not perfectly drafted when we have time or opportunity to utter our opinions in our newsletter.

Through our sarcastic criticisms and efforts exercised by some patent practitioners, some articles have been amended to reflect or rectify what are believed to be irrational. It is thus believed that giving the pressure to the government is the best way to help it grow or advance or progress.