Proposed Amendments To Some Articles Of The Patent Law

Wei-Ting Chou, Patent Director, Patent Group I

¡½ Master of Agricultural Engineering, National Taiwan University

¡½ Bachelor of Medical Engineering, National Cheng Kung University

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To follow the policy of loosening the economic laws in this country, in response to the international regulation adjustments and in order to perfect examination practices, amendments to some articles of the Patent Law have thus been proposed after hearing opinions from all relevant sectors as follows.

Article 29:

An applicant claiming priority in accordance with provisions of the preceding Article shall state the following circumstances at the same time upon filing a patent application:

1. the filing date of the first filed application;

2. country or World Trade Organization member entertaining the application; and

3. the application number of the first filed application.

The applicant shall also submit within sixteen months after the earliest priority date the filing document of which the acceptance is certified by the country or World Trade Organization member in the preceding paragraph.

An applicant shall be deemed as making no priority claim if violating provisions of Clause 1 or Clause 2 of the first paragraph or the preceding paragraph.

Where an applicant unintentionally fails to claim priority at the same time upon filing a patent application or is deemed making no claim through violating Clauses 1 and 2 of Paragraph 1, it may petition for a restoration of priority claim within sixteen months after the earliest priority date through paying the petition fees and supplementing the actions provided in Paragraphs 1 and 2.

Article 34:

A patent application that substantially contains two or more inventions may, upon notice by the patent-dedicated office or upon request by the applicant, be divided into two or more divisional applications.

A divisional application shall be effectuated within any of the following periods:

1. before receipt of a reexamination action of the original patent application; or

2. within three months after being served with a granting action of the original patent application or a reexamination granting action.

The divisional application shall take the filing date of the original application as its filing date; if there exists a priority, it is still claimable.

The divisional application shall not go beyond the disclosures in the specification, claim(s), or drawing(s) of the original application as filed.

The divisional patent application effectuated in accordance with Clause 1 of Paragraph 2 shall be examined following the completed procedures of the original patent application.

The divisional application under Clause 2 of Paragraph 2 shall be effectuated based on the invention disclosed in the drawings and specification of the original application and different from that of the granted claims thereof; the divisional application shall be examined from the completed examination procedures which the original patent application experiences before subject to the granting action.

The original application, once granted, shall not be amended with respect to its specification, claims, or drawings, and shall be published with the claims and drawings upon granting.

Article 46

An invention patent application violating provisions of Articles 21 through 24, Article 26, Article 31, Paragraph 1 or 3 of Article 32, Article 33, Paragraph 4 or the former part of Paragraph 6 of Article 34, Paragraph 2 of Article 43, Paragraph 2 or 3 of Article 44 or Paragraph 3 of Article 108 shall be rendered with an action refusing a grant of a patent.

The patent-dedicated office shall notify and require the applicant to respond in a specified period before the action is rendered in accordance with the provision of the preceding paragraph; an action refusing a grant of a patent shall be rendered if failing to respond by the due date.

Article 57

Any one may file with the patent-dedicated office an invalidation accompanied by evidence against a granted extended invention patent term under any of the following circumstances:

1. where practice of the invention patent does not require a permit;

2.where a patentee or licensee has not acquired the permit;

3. where the granted extended term exceeds the period impossible for practice;

4. where the petitioner of patent term extension is not the patentee;

5. where the permit for extension petition is not the first obtained one or has ever been processed with an extension;

and

6. where the pharmaceutical involved in the granted patent term extension is a veterinary drug.

Whenever the invalidation against the patent term extension is irrevocably established, the originally granted extended term shall be deemed ab initio inexistent, provided if the irrevocable invalidation is established  through violation of provisions of Clause 3 of the preceding paragraph, the exceeding term thereof shall be deemed not extended.

Article 71

Any one may initiate invalidation proceedings before the patent-dedicated office against an invention patent right in any of the following circumstances:

1. There is a violation of provisions in Articles 21 through 24, Article 26, Article 31, Paragraph 1 or Paragraph 3 of Article 32, Paragraph 4 of Article 34, Paragraph 2 of Article 43, Paragraph 2 or Paragraph 3 of Article 44, Paragraphs 2 through 4 of Article 67, or Paragraph 3 of Article 108.

2. The country to which a patentee belongs does not entertain a patent application filed by a national of ROC.

3. Where there is a violation of the provision of Paragraph 1 of Article 12 or the invention patentee is not the entitled invention patent applicant.

Invalidation proceedings initiated under the circumstance of Clause 3 of the preceding paragraph may only be made by an interested party.

The circumstances under which invalidation proceedings may be initiated against an invention patent right shall be based on the provisions when having a granting action, provided if invalidation proceedings are initiated under Paragraph 4 or the former part of Paragraph 6 of Article 34, Paragraph 2 of Article 43, Paragraph 2 or 4 of Article 67, or Paragraph 3 of Article 108, the circumstances shall be based on the provisions upon invalidating.

Article 73

Invalidation proceedings shall be initiated by submitting a petition form, stating an invalidation claim and reasons, and accompanying therewith evidence.

Where a patent includes more than one claim, invalidation proceedings may be initiated in respect of one or more of the claim(s).

An invalidation claim shall not be altered or added after submitted, but may be reduced.

Reason or evidence which the invalidator supplements shall be submitted within three months from the date when the invalidation proceedings are initiated, provided they shall not be considered if submitted thereafter.

Article 74

Upon receipt of a petition form under the preceding article, the patent-dedicated office shall serve the patentee a copy thereof.

The patentee shall respond within one month after served with the copy; if no response is made by the due date, the invalidation shall straightforwardly be examined unless a time extension made through stating reason in advance has been granted.

During the examination of the invalidation, the patentee may petition for correction only when notified to submit a response, or upon supplementing a response or during the period for the response, provided if the invention patent is undera litigation, this shall not apply.

After the patent-dedicated office notifies the invalidator to state opinions or the patentee to supplement a response, if necessary, the invalidator or patentee shall act in accordance therewith within one month after the notification is served, where opinions or response shall not be considered if submitted beyond this period, unless a submission extension is granted.

The patent-dedicated office may straightforwardly examine the invalidation without further sending a notification to supplement the response or state opinions if anything more than the stated opinions or supplementary response under the preceding paragraph is likely to delay the examination or if the fact and evidence thereof have been clear.

Article 77

If, during the invalidation proceedings, a correction is petitioned, the invalidation and the correction shall be examined and rendered an action thereon jointly.

Whenever the patent-dedicated office considers the correction under the preceding paragraph grantable after examination, a copy of the corrected specification, claims or drawings shall be served with the invalidator, provided this provision shall not apply if the correction is only to delete one or more claims.

Where there is more than one correction petition in the same invalidation proceedings, the earlier correction petition shall be deemed withdrawn.

Article 107

Whenever a utility model patent application substantially includes two or more utility models, one or more divisional applications therefor may be filed subject to notification from the patent-dedicated office or petition of the applicant.

A divisional application shall be effectuated within either of the following periods:

1. before a decision has been rendered for the original application; and

2. within three months after the decision on granting the original application is served.

Article 118

The patentee of a utility model patent, except for the condition under Paragraph 3 of Article 74 applicable mutatis mutandis under Article 120, may petition for a correction within either of the following periods:

1. Where there is entertained a petition for a utility model technical report for the utility model patent; and

2. Where there is a pending litigation involving the utility model patent.

Article 119

Any one may initiate invalidation proceedings before the patent-dedicated office against a utility model patent right having any of the following circumstances:

1. where there is a violation of provisions of Article 104, Article 105, Paragraph 3 of Article 108, Paragraph 2 of Article 110, Article 120 through applying mutatis mutandis Article 22, Article 120 through applying mutatis mutandis Article 23, Article 120 through applying mutatis mutandis Article 26, Article 120 through applying mutatis mutandis Article 31, Article 120 through applying mutatis mutandis Paragraph 4 or the former part of Paragraph 6 of Article 34, Article 120 through applying mutatis mutandis Paragraph 2 of Article 43, Article 120 through applying mutatis mutandis Paragraph 3 of Article 44, or Article 120 through applying mutatis mutandis Paragraphs 2 through 4 of Article 67;

2. the country to which a patentee belongs does not entertain a patent application filed by a national of ROC; or

3. where there is a violation of the provision of Paragraph 1 of Article 12 or a utility model patentee is not the entitled utility model patent applicant.

Invalidation proceedings initiated under the circumstance of Clause 3 of the preceding paragraph may only be made by an interested party.

The circumstances under which invalidation proceedings may be initiated against a utility model patent right shall be based on provisions when having a granting decision, provided if the invalidation proceedings are initiated under Paragraph 3 of Article 108, Article 120 through applying mutatis mutandis Paragraph 4 of Article 34, Article 120 through applying mutatis mutandis Paragraph 2 of Article 43, or Article 120 through applying mutatis mutandis Paragraph 2 or 4 of Article 67, the circumstances shall be based on the provisions upon invalidating.

The invalidation action shall bear the name of the patent examiner.

Article 120

Provisions of Article 22, Article 23, Article 26, Articles 28 through 31, Article 33, Paragraphs 3 through []7 of Article 34, Article 35, Paragraphs 2 and 3 of Article 43, Paragraph 3 of Article 44, Paragraph 2 of Article 46, Paragraph 2 of Article 47, Article 51, Paragraphs 1, 2 and 4 of Article 52, Paragraphs 1, 2, 4 and 5 of Article 58, Article 59, Articles 62 through 65, Article 67, Paragraphs 2 and 3 of Article 68, Article 69, Article 70, Articles 72 through 82, Articles 84 through 98, and Articles 100 through 103 shall apply mutatis mutandis to the utility model patent.

Article 135

The term of a design patent right shall expire fifteen years from the filing date; the term of a derivative design patent right shall expire with that of the original design patent right.

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