Field of Endeavor

The present article is intended to introduce the ROC Patent Law newly amended or promulgated on January 3, 2003, although it is not yet known on which date the Executive Yuan will eventually prescribe this amended Law to take effect.

Background Statement

If there really is a global country in the final future, it is believed that there must be a World Patent Law first.  If there really is a World Patent Law, there must be nearly uniform patent laws respectively in various countries.  Through efforts on harmonization or amendments through pressures coming from domestic or foreign sectors, one can find that Patent Laws in various countries are getting more and more uniform through amendments after amendments reflecting subjective harmonization or objective international treaty.

Summary of Developments

Some people take that the Chinese are relatively conservative.  Accordingly, some articles representing the special legal tendency only appearing in the Taiwanese or Chinese society are maintained peculiar to the world for a great many of years.  For example, before the amendments take effect on October 26, 2002, a change of the inventorship means a change of the filing date.  Such measure appears to be inhumane.  Nevertheless, it was the practice that we had.

The substantive examination of patent applications plays an important role in the patent system.  Taiwan Patent Office exercises substantial efforts in promoting the substantive examination quality, which has been felt.  Nevertheless, improving the examination quality does not involve in only one factor or aspect.  We must confess that there still exists a not small room for us to give chase to the standard of patent-advanced countries.

Through conservatism, over-elaborate formalities are musts.  On the contrary, due to economic achievements arrived in the past few decades, the Taiwanese are confident and yearn to be nationals of an advanced or fully developed country, just like the US.  Accordingly, more and more ‘advanced’ or even ‘promoting’ or commercially ‘encouraging’ articles in the Patent Law appear.  For example, the opposition system after publication is abolished in order to be silently or inherently uniform with the US practice.  Nevertheless, it appears that the responsible law-amending officers fail to take notice of the fact that the substantive examination quality of Taiwan is not comparable to that of the US.  Under such circumstance, would it be appropriate for Taiwan to abolish the opposition system at the present stage?  Especially, it appears to be untrue for the law-amending officers to take that the opposition system is no more popular in the international legislative tendency since it would seem that most of countries still have the opposition system for patent applications although it is true that utility model patents do not normally have an opposition system.

The utility model system here has a great change now.  A utility model is considered to have a lower creation level although there is no human being in this world who can definitely define where is demarcation line between higher and lower creations.  Till now, all patent or utility model Taiwanese applications can be filed as a utility application, which might depict there appears to be some kind of ridicule that a utility model is a creation of a lower level.  As is seen in many countries, the utility model here is stipulated to be subject to a formal registration only so that no more substantive examination therefore is necessary.  As in the past, we prefer to have no provision of the utility model in the patent law just like that in the US and the UK since the world will appear to be more real and simple without the utility model system.

Criminal penalties are also abolished for patent infringements so that we feel we are living in a more civilized country, although the US might feel we are not a good boy since she might still consider the counterfeiting phenomenon in Taiwan is not diminishing.

Brief Items to be Discussed for Presenting Issues We Concern

*Agent for patent-related matters (Article 11)

*Electronic filing (Article 19)

*Highly innovative invention (Article 21)

*Novelty and non-obviousness (Article 22)

*Unpatentable subject matters (Article 24)

*Formalities (Article 25)

*Format in specification (Article 26)

*Priority claim (Article 27)

*Requirements for enjoying priority (Article 28)

*Biological material (Article 30)

*Single general inventive concept (Article 32)

*Abolished opposition system

*New matter v. originally disclosed scope (Paragraph 4 of Article 49)

*National security (Paragraph 1 of Article 50)

*Offering for sale and claim interpretation (Article 56)

*Divided patent (to-be-deleted Article 68)

*Deadline for submitting arguments and evidences (Paragraph 3 of Article 67)

*Reduction or exemption of the annuity (Article 83)

*Rights of exclusive licensee (Paragraph 2 of Article 84)

*Propriety of Invalidation (Paragraph 2 of Article 90)

*Registration of utility model (Article 97)

*Technical report for utility model (Article 103)

*Enforcing utility model patent (Article 104)

*Damages and non-negligence (Article 105)

*Claims for design (Article 116)

*Unity of Design (Article 119)

*Abolishment of penalties

*Transition clauses (Paragraph 2 of Article 134 and Article 138)

Detailed Analyses

*Agent for patent-related matters

At the present time, under the Taiwan practice, a lawyer or a judge having no technical background or an account having neither law background nor technological knowledge can serve as a patent agent.  As a result of such humorous or ridiculous provisions we have, a new patent attorney law has been in the process of being enacted for more than 10 years during which one of major controversies is whether the presently practicing patent agents or attorneys should be tested to pass the Patent Attorney Examination de novo.  After a long period of struggle, the presently practicing patent agents are admitted to continuously provide their services and are called as patent agents.  Only those who pass the Patent Attorney Examination will be called as patent attorneys.  Other newcomers, e.g. any new attorney-at-law who can automatically provide services for the patent-related matters are all classified as patent agent.  Accordingly, an agent under the amended Patent Law includes a patent agent and a patent attorney.

*Electronic filing

As the information industry advances, the paperless process is contemplated or strived for by various governments.  Electronic filing can be electronically processed or even programmed to be automatically responsive as desired in a most efficient manner.  Such expediency is apparent.  Nevertheless, it is uncertain whether such measure can really achieve the purpose of being paperless as originally pursued since it appears that the examiner will do his examination work on a hard copy and that the applicant and the patent attorney need have hard copies on their respective files.  After an indefinite proper period of preparation, the Intellectual Property Office (IPO) will not only introduce such electronic filing system but also has the ambition, under the slogan of E-government, to permit any petitioner’s electronically looking into the file wrapper.

*Highly innovative invention

As is known and traditionally defined here, a creation being ‘highly innovative’ falls into the purview of an invention and one being not ‘highly innovative’ is categorized as a utility model.  Logically, such demarcation is understandable.  Nevertheless, it is hard to explain a utility model in Taiwan can successfully seek patented a utility patent in the US, especially in view of the fact that the US has a technical level apparently higher than that in Taiwan.

Perhaps, the law-amending officers or personnel find the above truth appears to be not so reasonable.  Accordingly, the words, ‘highly innovative’, for defining in assistance the "Invention" are deleted from the article.

Through such amendment, it would appear that the IPO will exercise more conservative attitude in taking that an application is not qualified as an invention because of its progressiveness, non-obviousness and/or technical advancement, degree or level.  Accordingly, the applicant can pay less thoughts or attention in determining whether it should file an application as an invention or utility model.  In other words, an application should be filed as an invention application if there exists any kind of consideration as to whether it should be filed as one for which kind of patent application.

*Novelty and non-obviousness

As is well known, to lose or ruin the novelty, the following three events, i.e. having appeared in a publication prior to filing, having been put in public use prior to filing, and having been publicly known prior to filing can play the same import or result in the same consequence.  Since these three events can be told apart easily and the last one cannot necessarily be categorized into or included in the former two, the last one is added into the law in order to make up the apparent legal loophole not seen in the patent law of major advanced countries.

There are exceptions to the loss of novelty.  Specifically, with the provision of a grace period, i.e. normally 6 months in various countries having first-to-file system, an application can still be filed for patent within six months from the date on which an application is occurred with any of the following events, i.e. disclosed due to research or experiment, having been displayed in an exhibition sponsored or approved by the government or disclosed without the intention of the applicant.  For the last event, the presently law cannot rescue such situation.  Although the applicant might have the fault to strictly keep its creation from being disclosed, this is not equivalent to the fact that it fails to carefully safeguard its creation.  This is because in such competitive time, it requires a lot of prerequisites which must be seamlessly met before either an applicant or an invention can find its success in the world or market.  People are fragile and the world is full of accidents.  Accordingly, if an invention is unintentionally disclosed by a third party, the innocent inventor or applicant should be reserved the rights for effectively filing in the grace period an application.  According to the legislative reasons, such amendments for the exception for unintentional disclosure by a third party will make the law to be in line with the provisions of EPC and Japanese patent law.

According to the amended law, an application will be deemed obvious if easily achievable by one having ordinary skill in the pertinent art by utilizing the existent technology prior to filing.  Specifically, according to the underlying reasons for the law amendments, there are three emphases upon determining whether an application is non-obvious or inventive, i.e.:

1. Judging from the published techniques prior to filing: Accordingly, it is made clear that the relevant techniques which can be put into consideration should be known or published ‘prior to filing’;

2. Judging from the techniques of the pertinent art: The current clause of determining whether an application is ‘utilizing the known technique or knowledge’ is alleged to be unnecessary.  Accordingly, the amended clause is asserted to be more clear and correct; and

3. Judged by one having ordinary knowledge in the pertinent art: The term of ‘one having ordinary knowledge in the pertinent art’ is changed from ‘one skilled in the art’ in order to be allegedly more clear.

*Unpatentable subject matters

The Article of unpatentable subject matters is amended.  Specifically:

1. The item ‘new animal or plant variety, provided this limitation shall not apply to the process for cultivating new plant variety’ is changed into “Animal or plant variety and essentially biological method for producing animal or plant, provided this limitation shall not apply to a microbiologically producing method.”  The reasons include:

A.      According to the provisions of TRIPs, each member can preclude the patentability of ‘animal or plant variety’ or ‘essentially biological producing method’;

B.      Although Mainland China precludes the patentability of ‘animal or plant variety’ but include the patentability of their producing method, her examination guidelines preclude the patentability of ‘any animal or plant variety’ or an ‘essentially biological producing method’;

C.      European Union 98/44 Directive and Article 53(b) of European Patent Convention (EPC) preclude the patentability of ‘animal or plant variety’ except ‘animal or plant’ not belonging to a ‘variety.’  In addition, EPC excludes an ‘essentially biological producing process’ but not a ‘microbiological producing process’; and

D.      The current law sets a standard of patentability with the distinction of animal or plant, which is apparently different from the international practice and thus should be amended to comply therewith.

2. ‘Method of operation’ is amended into ‘method of surgical operation’ for clarification.

3. Items 3 through 5, i.e. ‘scientific theories or mathematical methods,’ ‘rules or methods of playing games or sports,’ and ‘other methods or schemes executable only through involvement of human deduction or memory abilities’ are deleted.  Reasons for this are not declared.  Nevertheless, they possibly include:

A.      It is vividly apparent that scientific theories per se are not patentable.  Pure scientific theories per se cannot work for human being before they are applied in daily utilization;

B.      By the same token, pure mathematical or playing methods or rules per se cannot contribute to the human society before they are employed in the daily life;

C.      Through the introductions of software patents, business method patents and e-commerce patents, principles, schemes or rules are significantly shocked from the exclusions of patentability if they are found to have a pre- or post-activity.

*Formalities (Article 25)

Prerequisites for filing date are released by:

1. Dispensing with the requirement of submitting an oath executed by the inventor upon filing; and

2. No more requiring the payment of the official fee as a prerequisite of obtaining an effective filing date;

*Format in specification (Article 26)

Claims are clearly defined to be included as a part of specification by referring to the provisions of Article 36 of Japan Patent Law, 35 USC 112 and Article 83 of EPC.

The requirements of descriptions of ‘pertinent prior art, object of invention, technical contents, features and advantages’ in the specification are superseded by being ‘definitely and sufficiently disclosed’ in order to conform to the international practice under Article 29(1) of TRIPs.

In order to specifically provide how claims should be recited by referring to Article 36 of Japan Patent Law, Article 84 of EPC and Article 26 of Mainland China Patent Law, there is provided a paragraph, ‘Claims shall precisely recite the claimed invention.  Each claim shall be concisely recited and must be supported by invention description and drawing.’

*Priority claim (Article 27)

The Amended law clearly reflects the fact that effective from January 1, 2002, any WTO member, in addition to a foreign country mutually recognizing priority claim with the Republic of China, can claim priority for its ROC application.

Furthermore, paragraph 3 provides that ‘A foreign applicant who is not a national of a non-World Trade Organization member and 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 World Trade Organization member or mutually favored country.’

*Requirements for enjoying priority (Article 28)

The requirement of reporting the application number of a priority application upon filing is abolished through reference to Article 4(D)(1) of Paris Convention.

In the second paragraph, ‘the applicant shall also submit within four months from the following date of filing the filing document certified to be accepted by government in the preceding country,’ the term “four months” is changed from the current ‘three months’ in order to comply with the provision of Article 4 of Enforcement rules of the Patent Law Treaty passed by the international diplomatic conference held on June 1, 2000 by WIPO, which provides that the term for submitting the priority document should not be less than 16 months from filing the priority application.  Accordingly, this paragraph appears to include an error that it takes every application claiming priority is filed in the Taiwan IPO on the date after exactly one year from the priority application so that the applicant must submit the priority document within four months from the local filing date.  Nevertheless, it seems that this is not the truth.  Therefore, it would appear that the clause ‘four months from the following date of filing’ in this paragraph should be replaced by ‘sixteen months from the priority date.’

*Biological material (Article 30)

According to the strict academic definition for microorganism, it does not include a substance, e.g. plasmid, capable of indirectly self-reproducing in a biological body.  Accordingly, the term ‘microorganism’ is revised as ‘biological material’ through reference to Article 23(b)(3) of the Enforcement Rule of EPC and Article 25 of the Enforcement Rule of Mainland China Patent Law, which both interpret the ‘biological material’ as “any material containing genetic information and capable of reproducing itself or being reproduced in a biological system.”

*Single general inventive concept (Article 32)

The current provision about unity of invention is alleged to be not enough deliberative and should be amended to be harmonizing with the international trend since Taiwan has become a member of WTO and there is an initial consensus on the concept of unity of invention in the Substantive Patent Law Treaty draft.  Accordingly, the second paragraph is amended into ‘two or more inventions belonging to a single general inventive concept may be filed for application in an application’ through references to Article 7 of said draft, Article 82 of EPC, Article 13(1) of Enforcement Rule of PCT and Article 31 of Mainland China Patent Law.  As to concrete contents of ‘a single general inventive concept,’ they shall resort to the enforcement rule and the examination guidelines.

*Abolished opposition system

Under the current system, the public inspection is exercised through the opposition system and the invalidation system respectively before and after paying the issue fee.  Specifically, an allowed application will be automatically published if no delay for publication is requested.  Any one considering the application incapable of meeting the patentable requirements can institute an opposition proceeding by accompanying evidences within three months from its publication.  The patent certificate will be issued only after the opposition procedure is irrevocably decided.  Nevertheless, unless there is no opposition within the 3-month publication period, it is uneasy or never a short process for an opposition procedure to be irrevocably decided.  This is because:

1. For an opposition procedure to be irrevocably decided, it must subject to the opposition procedure before the IPO, an appeal procedure before the Board of Appeals in the Ministry of Economic Affairs, a first instance litigation before the higher Administrative Court and a second or final instance litigation before the Supreme Administrative Court, each of which might cost well more than one year.  Before all these proceedings can come to an end, the applicant cannot obtain the patent certificate for several years even after it has obtained an action granting the invention or application;

2. More specifically, although the applicant will have an ad interim patent right after receiving the action granting the application, such ad interim patent right in fact cannot impart to the applicant any practical or substantial interests whenever there is an opposition.  This might be the core reason why the opposition system is advocated to be abolished;

3. More complicatedly, during the 3-month opposition period, different persons can respectively file different oppositions before the IPO, which must assign different groups of examiners to respectively examine the different oppositions.  Although similar situations can be found in theory even in the invalidation proceedings, it would appear that the opposition system easily allures ‘smart’, ‘bad’ or ‘cunning’ “merchants” to lodge a lot of similar oppositions with interposed evidences and arguments through the adoption of straw opposers.  This situation will become more true especially when a competitor become known that its primary opponent has been granted an application which will threat its commercial chance or embarrass its commercial promotion.  The primary opponent will thus suffer a serious headache period and feel frustrate about what the patent system can finally do it what kind of real favors.  Some cunning guys use such opposition system to obstruct a goodwill-applicant in duly obtaining a patent certificate.  Accordingly, voices advocating the abolishment develops in spite of scrupulous considerations whether accompanying systems or regulations can duly cope with such law-amendment;

4. According to the trend of international legislative practice alleged by IPO by citing that the amended Patent Laws in Japan and Korea have changed from pre-issuance issuance opposition system into the post-issuance opposition system and that Mainland China has abolished the opposition system, whether there should be the existence of the opposition system should be subject to be reviewed?  There are two aspects to be considered from our viewpoint:

A. Post-issuance opposition system is irrelevant to cancellation, invalidation or nullification system: This is because the post-issuance opposition is a kind of opposition.  Accordingly, we can obtain:

a. To escape from the shortcomings of the opposition system is not necessitated to abolish the opposition system.  Similarly, abolishing the opposition system needs not be a must to obviate the shortcomings accompanying the opposition system;

b. Since the post-issuance opposition system is a kind of opposition system, both Japan and Korea have not abolished their opposition system.  Accordingly, taking the adoption of the post-issuance opposition system in Japanese or Korean legislations, which in fact, show that the opposition system is necessary but has been changed from the pre-issuance opposition one into the post-issuance opposition one as a primary reference to totally abolish the opposition system in this country appears to be non-convincing or unpersuasive.

c. Specifically, if the opposition system is to be abolished thoroughly, reasons as to why there still exist kinds of shortcomings even for the post-issuance opposition system should be discussed and examined to a further detail, in addition to the analyses of shortcomings made to the pre-issuance opposition system.

B. It has been recognized that the Patent Law of Mainland China adopts quite a lot of spirits from the Patent Laws in Germany, Japan and/or even Taiwan.  Nevertheless, before referring to the Chinese Mainland Patent Law decided in 1993 to follow the US patent practice without the opposition system, it would appear better to further research the exact reasons for such drive.  The mere formal adoption without knowing why something should be adopted seems to be not a very good idea.

5. Under the current Taiwan Patent Law, any interested party can still institute the invalidation proceedings after the issuance of the patent certificate.  According to IPO, the invalidation proceeding under Taiwan Patent Law corresponds to a cancellation or nullification action in the foreign countries.  Specifically, under their proceedings, the proceedings for invalidation are different from those for opposition.  Furthermore, appeals or relief procedures for actions or decisions made in the invalidation and opposition proceedings are mutually different from each other in those countries.  Nevertheless, causes, procedures and provisions for invalidation and opposition under Taiwan Patent Law are generally the same.  Accordingly, through the abolishment of the opposition system, according to the IPO:

A. Provisions or causes in the Patent Law for opposition and invalidation are integrated in order to retain the public inspection spirit in the law;

B. The patent dispute procedure is simplified;

C. The justifiable rights of the patentee can be secured earlier so that the patentee needs not necessarily be trapped in the tedious dispute procedure;

D. A published application can immediately be granted with the patent rights and the patent certificate by paying the issue fee.

*New matter v. originally disclosed scope (Paragraph 4 of Article 49)

Article 49(3) of the most newly amended Taiwan Patent Law provides that “after 15 months from the filing date of 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 after 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.”

The above paragraph has no problem.

Article 49(4) stipulates that “supplement or amendment according to the preceding three paragraphs shall not be made beyond the scope disclosed by the original specification or drawings upon filing.”  Independently reading or understanding this paragraph or the preceding paragraph will not raise any issue.  Through carefully reading them, we might be able to find or clarify the following potential problems:

1. According to Article 26(1) of the newly amended Patent Law, a specification of a patent application shall by its definition include the claims.  Before we discussing the matter into a greater detail, we should define what is scope as provided in the article, which in our opinions, can be categorized into two types, namely:

A. Scope of claims: The protecting scope of a patent is conferred by the claim language in the specification.  It is believed that this is the traditional meaning of ‘scope’ related to patent rights or patent specification and will not be further mentioned due to its acquaintance with the general patent practitioner.

B. Scope of disclosure: This term might be easily understandable through the introduction of the concept of “new matter.’  Specifically, any addition or deletion from the original disclosure which will cause the contents of the added or deleted specification differ from those of the original text will be regarded as a new matter.  In other words, any change will not be regarded as having escaped from the original scope of disclosure if said change does not involve in any new matter.

2. Accordingly, the scope disclosed by the original specification will theoretically include:

A. That disclosed by claims (CLAIM SCOPE): This scope is to determine under which circumstance the patentee can accuse a patent infringement by a product;

B. That disclosed by descriptions of the specification other than claims (SPECIFICATION SCOPE): A patentable subject matter must come in the SPECIFICATION SCOPE first before it can appear in the CLAIM SCOPE.  Specifically, a subject matter which appears in the SPECIFICATION SCOPE necessarily appears in the CLAIM SCOPE;

C. That discarded by the applicant: The difference between the SPECIFICATION SCOPE and the CLAIM SCOPE presents a scope (DIFFERENCE SCOPE), which might go into the public domain.  Such scope can be put into the CLAIM SCOPE if desired but is not finally so done.  The reasons might be that the applicant feels like not to claim that or that the applicant does not have the opportunity to find out there is such scope existent in its patent during the lifetime of the patent; and

D. That not originally claimed but desired to be subsequently claimed and granted by law: For example, before the allowance of a patent application, the applicant is normally allowed to move the subject matter of DIFFERENCE SCOPE in the specification into the claim.  For further an example, within two years from the date of issuance of a patent, the patentee can broaden its protective scope by the reissue system in the US.  Perhaps, we can call this RECOVERABLE SCOPE; and

E. That not originally claimed but desired to be subsequently claimed and forbidden by law: Such scope often is found when a competitor appears or the patentee desires to curb an infringement but finds its claim scope then on file cannot successfully read on the involved product and wants to broaden its scope, to which it is originally entitled, in an attempt to succeeding in claiming infringement by the competitor or the accused product.  Perhaps, we can name such scope to be FORBIDDEN SCOPE.  Such scope is forbidden to be claimed because of:

a. Time limitation: For example, the two-year term for the reissue expires, which will make an effective protecting scope for the subject matter categorized in FORBIDDEN SCOPE impossible; or

b. Legal event: For example, earlier publication or post-grant publication of a patent application.  This is different from the preceding item because it is clear that the subject matter contained in FORBIDDEN SCOPE in the preceding item is not protected in any way of a surety.  Nevertheless, it appears to be controversial whether the subject matter contained in this item is really a forbidden scope because:

I. The pros will say: Since such FORBIDDEN SCOPE has been published to the public without being claimed or reservation, the potential rights possibly existing in such FORBIDDEN SCOPE would have been driven into the public domain and could no more be recoverable; and

II. The cons will say: Such FORBIDDEN SCOPE is different from FORBIDDEN SCOPE in the preceding item because that in the preceding item has been legally forfeited while there is no law expressly providing that the applicant should also be deprived of that in this item simply because there is an event in this item.  In this regard, the article of previous issue of our newsletter might be incorporated here for reference.

3. According to Article 49(4), supplement or amendment according to its preceding paragraphs shall not be made beyond the scope disclosed by the original specification or drawings upon filing.  Through the above discussions, we can find:

A. The circumstances listed in Article 49(3) are all related to procedures before the grant of a patent.  It should be relatively easier for us to believe that before earlier publication or post-grant publication, it should be under our comfortable reliance that it is justified for us to permit a DIFFERENCE SCOPE to be shifted into the CLAIM SCOPE by such time.

B. It appears that the later the supplement or amendment is made after the earlier publication or post-grant publication, the more difficult or reluctant we will feel it comfortable to permit such supplement or amendment.  Specifically, there are two time points by which such circumstance is involved:

a. After post-grant publication: After post-grant publication, the CLAIM SCOPE is definite among the patent office, the patentee and the general public for at least a certain period of time.  The potential allowability to permit such supplement or amendment is minimum.  Nevertheless, please refer to the reissue system in the US and our preceding issue of newsletter; and

b. After earlier publication but before post-grant publication: The potential allowability to permit such supplement or amendment is larger than that of post-grant publication because the application has not been allowed and is still under prosecution but smaller than that of pre-earlier publication because the application has been put in public inspection by which the general public has possibly clearly understood which scope is prohibited and which kind of action is allowed through the investigation and interpretation of the declared claims contained in the specification.  In this regard, we tend to believe that we should allow such supplement or amend at such time period because:

I. The claims or patent have not been allowed or the prosecution thereof has not been closed.  Allowed such opportunity to rescue what it can originally avail of does not confer unjustifiable interests on the applicant;

II. Although the general public has already had an image as to what is the possible final scope of the involved patent application, changing or broadening the imagined scope should fall into the imaginable extent of the general public so that such allowance to the applicant does not harm the rights of the general public to a significant degree; and

III. If the applicant can realize it should broaden or change its CLAIM SCOPE without the involvement of a third party before its application is allowed, it is believed that our sympathies will be invited under such circumstance since such broadening or change is initially or primitively available thereby.

4. Certainly, there also is a period between the receipt of an allowing action and the post-grant publication, which might be considered independent of the above-described periods.  Theoretically, it is believed that this short period should not be processed in a way different from the period after earlier publication but before post-grant publication since we cannot find out any reason which can underlie the latter two periods should be differently handled.  The reason why the period in this item is pricked out or might be otherwise categorized is that the normal procedure of an application before the official authority has come to a supposed end.  The official authority does not like to be bothered again to take care of amendments in this period.  Similar situation can be found, e.g. after receiving an allowing action, it is no more possible to change the claim scope or even make any amendment under Taiwan patent practice.  Although it might be impossible to change the claim scope after the receipt of the notice of allowance, it is still possible to seek patented the intended changed scope in a divisional application under the US patent practice, which appears to be more humane.  It is believed that the law should leave room through which the applicant can try to seek protected what it believes eligible to be protected so that the applicant can have a healthy mind before the government.  Specifically, even if the procedure before the authority has come to a presumed end, the applicant should be allowed the chance to pursue what it believes deserved to be protected.

*National security (Paragraph 1 of Article 50)

In addition to the Ministry of National Defense, whether an invention will likely influence the national security, other national security related authorities, e.g. National Security Bureau, National Security Conference, Investigation Bureau of Ministry of Judicial Administration, National Science Council or Central Scientific Research Institute should be included in the possible list of consultation.

*Offering for sale and claim interpretation (Article 56)

According to Article 28 of TRIPs, offering for sale is a type of infringement so that this type of infringement is included in the newly amended patent law.

In addition, in interpreting the claims according to the new law, one may make reference to specification description and drawings at all times rather than only when it is necessary as in the current law.

*Divided patent (to-be-deleted Article 68)

Under current articles or practice, another application is dividable from the original claims or the specification.  According to the IPO, a divided patent after grant under current Article 68 is allowable but should not be permitted because:

1. The claim scope should not be broadened after grant: It would appear that the allowance of a divided patent needs not be related to the broadening of a claim scope because just as recognized by the IPO, a divisional application can divide the subject matter either from claims or specification.  As such, it is a kind of re-capturing behavior rather than scope-broadening action.  On the contrary, if allowing such division is broadening the scope, how we can stand before the fact that the IPO allows shifting the subject matter from the specification not originally in the claims into the claims during the opposition or invalidation proceedings?  Specifically, why the subject matter shift in a normal application should not be allowed but that in an application in dispute should be allowed?  Furthermore:

A. If shifting the subject matter from the specification into the claims is permissible in the dispute proceedings, should the applicant so attempting utilize such measure, trying to find someone to invalidate or oppose its application, to rescue the DIFFERENCE SCOPE?  Is this justified?

B. If shifting the subject matter from the specification into the claims is permissible, why the current law provides that only DIFFERENCE SCOPE which has a protecting scope smaller than that of the original claim scope can be shifted into the claims after the grant?  Is it because that which has not been claimed has gone into the public domain?  If this is the case, why only the larger protecting scope is prohibited but the smaller protecting scope which has also gone into the public domain not?  From these reasoning, can we understand again that the US reissue system having two-year time limit is very reasonable?

2. The divided patent will be different from the original one: This reason is funny since if the divided patent is the same with the original one, why it becomes necessary for the patentee trying to divide a new application;

3. The claim scope of the divided patent will be changed: This reason also sounds funny too since if the divided patent has not a changed scope, it must be the same with the original one, and the question goes back to the preceding one;

4. The IPO needs to examine whether there is a scope sought beyond the original one for the divided patent: It is unclear what is exactly meant by ‘sought over’?  Does it mean a different scope from or a larger scope than the original scope?  Either of them will go to the preceding items respectively.

5. The divided patent will complicate the examination procedure: This should not be a reason because it should be able to be overcome by imposing official fee if necessary.

6. The divided patent will make the protected scope uncertain through its change: If a change is necessary or justified, it must ensue a change in the protecting scope.  If the change in the protecting scope is realizable, what kinds of disadvantages can be identified if there is an uncertainty in the protected scope?

7. There is no legislative precedent as to the allowance of a divided patent: This appears to be untrue in view of the clause, ‘the Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant,’ in Paragraph 2 of Section 251 of the US Patent Law.

*Deadline for submitting arguments and evidences (Paragraph 3 of Article 67)

Under the current law, reason or evidence the invalidator supplements shall be submitted within one month from the date initiating the invalidation proceedings.  According to the newly amended law, they shall still be considered if submitted before the action on the merits of the invalidation proceedings is rendered.  Such amendment is preferred because:

1. The current law provides reason or evidence shall be submitted within one month from the initiating date.  Such provision will raise the following problems, i.e. when they are submitted after one month, whether they should be considered?

A. If yes: The law will be insulted since the one month period serves no meaning.  In addition, after the case is presented to a government authority of a higher level so far as the remedy is concerned, such government authority might not have the competency to consider the newly submitted reason or evidence since its examining or trying members normally are not well-equipped in patent skill or knowledge;

B. If not: It will raise the following questions:

a. Since the later submitted or new reason or evidence are not considered by the IPO while its examining the application, the action it renders should not be repealed simply because these new reason or evidence will change the results of the action should they have been considered by the IPO since this will mean the original action rendered by the IPO is correct and a correct action shall never be repealed.  Accordingly, the interested party can only initiate an entirely new proceeding to pursue the matter by such new reason or evidence.  This, however, is not cost- or procedure-effective;

b. Nevertheless, according to the codes of civil, criminal or even administrative proceedings, the first instance or second to last instance of the court proceedings can review all kinds of facts and legal applications.  Accordingly, those which are prohibited to be considered in the previous stages of administrative disputes or remedies shall come naturally into the purview of review.  Are we comfortable about this?

c. The most critical or serious matter is that according to the principle of res judicata, shall we deny or permit an interested party to institute a new proceeding based on reasons and evidences which are prohibited to be considered in the previous stages but have come into the purview of review by the court?  The difficulties we have here include:

I. Although these reasons or evidences are not considered in the previous stage, they have been investigated by the higher authority or the court so that they should not be used as a new issue or cause of action for instituting a new proceeding;

II. Although these reasons or evidences have theoretically or legally been considered by the higher authority or the court, whether they have been properly considered is doubtful so that they should serve as a new issue or cause of action to be competently pursued in a new proceeding in order to be satisfactorily, reliably and duly taken into consideration.  This is because the persons or the judges in the higher authority or the court normally are not believed to personally have the reliable special technique or skill for rendering a proper action or decision as those in the previous stage.

2. Accordingly, such law amendment deserves encouraged.

*Reduction or exemption of the annuity (Article 83)

The newly amended Article 83 stipulates that “being natural person, school or medium- or small-sized enterprise, the invention patentee may petition to the patent-dedicated office for deduction or exemption of the patent annuity; the regulations of conditions, year periods, amounts and other matters to be followed regarding the deduction or exemption shall be prescribed by the responsible authority.”  Under the current law, only the patentee or its successor having no financial capability to pay the annuity can request for the reduction or exemption.  According to the IPO, the current law is amended because:

1. It is unclear what is meant by ‘no financial capability’;

2. There are very few very few such petitions;

3. To achieve the legislative goal of encouraging and protecting the creation, it should be clarified as to who can enjoy such provision;

4. Since natural person, school or medium- or small-sized enterprise are weak parties in the economically competing environment, which can be understood from the fact that the percentage of patents obtained by medium- or small-sized enterprise is not proportional to that of their number, and it requires a period of time for seeking cooperation for commercialization after they have obtained the patents, the law will not in this way express its spirit of promoting the industrial development;

5. There are similar foreign precedents in this regard.  We do not know whether the IPO is mentioning the small entity adopted in the US and Canada.  If yes, it is unclear why only the annuity, but not including the filing fee, is applicable?

*Rights of exclusive licensee (Paragraph 2 of Article 84)

According to the current Article 84, the patentee may claim damages, petition to preclude the infringement and petition to prevent from it in the event of likelihood of an infringement.  Such rights can be exercised by the exclusive licensee only when the patentee so requested does not so enforce, which is considered to be too much strict for the exclusive licensee.  As such, the amended law revise the article and make it clear that the exclusive licensee can also enforce such rights unless agreed upon in a contract.

*Propriety of Invalidation (Paragraph 2 of Article 90)

Similar to the case as happening in the opposition, the potential infringer or interested party can use the invalidation proceedings to request on the one hand that the court suspends the action pursuing infringement until the invalidation proceedings have been irrevocably rendered while instituting another invalidation proceedings with nominally or formally different reasons or evidences on the other hand so that it is uneasy for the patentee to enforce its rights.  Accordingly, the amended Article 90(2) makes it clear that the court, upon deciding to suspend the infringement action, shall take note of the properness of submission of the invalidation proceedings, by which the court can decide not to suspend or resume the trial of an infringement action.

*Registration of utility model (Article 97)

According to the IPO, the reasons why the utility model adopts the registration system without examination include:

1. In this knowledge economic era, the information development greatly advances and the life period of kinds of technological products is getting shorter and shorter so that the inventor is more eager to anticipate that his invention can be put into market efficiently: This reason is specious and spurious in that:

A. Any invention can be put into the market regardless of whether it has been patented;

B. Whether a utility model is registered is irrelevant to whether the product or the invention should be put into the market because:

a. Any one who has some patent knowledge will know the utility model is merely registered so that it is not a ‘concrete’ right;

b. In order to prevent the utility model registrant from abusively enforcing the utility model right, the law has provided that a technical report should be prepared before it can take any legal action.  Such technical report is more or less similar with the formal examination of the current substantive examination for patent or utility model.  If the registrant can claim its rights only after a technical report is submitted, what is the relevancy of the time when the invention is put into the market with whether a mere registration is required for the utility model?

C. The key factor might reside in that a patent application can only obtain provisional protection after 18 months from the filing or priority date or concrete protection after grant while, both of which are too long: Nevertheless:

a. If 18 months are too long, why it is not considered to shorten this period?

b. If the grant procedure is time-consuming, why it is not considered to be time-effective?

c. If the utility model can adopt the registration system, why the patent cannot?

2. In the patent system of primary countries, e.g. Japan, Korea and Germany, they have dropped the substantive examination system but instead adopts the formal or basic requirement examination for the utility model of a lower technical level in order to empower the rights to the applicant as early as possible: Here, we have:

A. We do not know how the US or her patent attorneys feel after getting known to the fact that a utility model of a lower level in Taiwan can often be granted a utility patent?

B. We do not know whether there is an organization in the world investigating whether the patent system having the utility model is running more well than that having no utility model?

3. It is interesting to consider or discuss the differences between the provisional protection of a patent (the former) and the formal protection of the registered utility model without a technical report (the latter).  Specifically:

A. The former in fact protects nothing but reserves the rights or possibility to retroactively claim damages.  Likewise, the latter protects nothing unless a technical report is rendered;

B. The former can enjoy the rights of enforcement only after an unanticipated period of time because the examination term is not predictable.  Likewise, the latter can enjoy the enforcement rights only after the technical report has been completed, which period is relatively shorter.  Nevertheless, why it is necessitated that the period of rendering the technical report is shorter than that of examining a patent?  Can’t we let that these two periods are equal or even the examination period of a patent is shorter than the rendering of the technical report?  Is this impossible because:

a. The examination of a patent is to be responded or argued by the applicant while the technical report is not?

b. Why must the technical report be correct?  If we believe that the technical report does not necessarily be correct, why don’t we allow the applicant to argue its contents?  This is simply because we do not want the technical report to be simulated to an office action?

C. The former cannot be enforced before the court because it is a right of anticipation while the latter can because it is a legally concrete right.

4. It is also interesting to ascertain the differences between no protection (the former) and the formal protection of the registered utility model without a technical report (the latter).  Specifically:

A. The former has no right at all while the latter merely has a nominal right before the technical report is rendered;

B. It is admitted that a nominal right is an intermediate between no right and a concrete right.  Nevertheless, we would like to point out one skilled in the patent-related knowledge might not respect too much about such nominal right;

C. The former is nothing while the latter can really become something after some procedure is taken.

5. It deserves to investigate the differences between the technical report (the former) and the substantive examination (the latter).  Specifically:

A. The former is only used for important reference while the latter can be transformed into a concrete right if favorable;

B. The former is not contestable before the patent office while the latter is.  It is funny to note that if the examiner in the latter can make a mistake, why an examiner in the former cannot?

C. It is uncertain whether the criteria exercised in rendering the former and the latter are the same?  If yes, why the former should be used to examine a creation of a lower inventive step?  For a creation of a lower inventive step, shall we apply the same judging criteria with those for the latter?

*Technical report for utility model (Article 103)

In the above item, we have discussed the Utility Model Technical Report a lot.  Such technical report can be petitioned by any one.  According to the IPO, such technical report is justified because:

1. The right contents of a registered utility model exist a lot of instabilities and indefiniteness.  If the registrant abusively enforces such uncertain rights, a great damage will be brought forth toward technical utilization and research of a third party;

2. Through the provision that any one can petition the technical report, the system of public inspection can be simulated.  Nevertheless, such technical report is not binding on but merely provides reference for the relevant governmental authority.

The petition for technical report, which has been published in the Patent Gazette shall not be withdrawn in order to safeguard the rights of the interested party.

*Enforcing utility model patent (Article 104)

According to the IPO, since the utility model patent is not subject to the substantive examination, an objective judging data, i.e. the technical report, should be submitted upon enforcing the rights derivable from a utility model patent.  This is not to limit the rights of litigation by nationals but to prevent the abuse of rights by the registrant.  This can be made clear through the following facts:

1. A civil proceeding can still be instituted even the utility model registrant does not depose the technical report; and

2. It is not necessitated that the court will reject the entertainment of an action which is not accompanied by a technical report.

*Damages and non-negligence (Article 105)

In order to prevent the utility model registrant from abusively enforcing its rights, the first Paragraph of Article 105 provides that “if the patent rights are cancelled, the utility model patentee shall be responsible for damages caused by its enforcing the utility model patent rights against the other before the cancellation,” by which the registrant must prudently enforce its rights.  If, through due diligence, the registrant knows that the utility model rights might be cancelled, there might exist negligence on the registrant.

Nevertheless, the second Paragraph of Article 105 stipulates that “if the rights in the preceding paragraph are enforced based on contents of the utility model technical report or through due diligence, a non-negligence shall be presumed.”  Specifically, according to the IPO:

1. Since the technical report can only be rendered after a certain period of time, it is impractical for the law to require that the utility model registrant can only enforce its rights after the technical report is rendered so that the damages of the registrant will not be expanded;

2. Accordingly, if the registrant has deliberately consulted the relevant experts, e.g. attorneys-at-law, patent attorneys or experts to obtain a confirmation on its right contents, it is not blamable.

*Claims for design (Article 116)

According to the IPO, design patents primarily differ from invention or utility model patents in that a design is directed to an improvement or enforcement on the overall appearance of an object.  Whether such requirement is met can be judged upon examination from the drawings submitted upon filing so that the recitation of claim in a design application is unnecessary.  It might be controversial for the present article to require a claim in a design application, which is seldom found in legislative precedents so that the requirement of requiring a claim in a design application should be abolished.

*Unity of Design (Article 119)

Paragraph 1 of Article 119 stipulates that “a design patent application shall be filed for each design,” by which it means:

1. A design is to mean a single embodiment; and

2. A design relates to a creation of an esthetical appearance while an invention relates to a technical innovation so that it is improper for a design to apply mutatis mutandis the article for the invention patent.

*Abolishment of penalties

According to the IPO, although Article 61 of WTO/TRIPs provides that there should be criminal proceedings and punishments for behaviors of counterfeiting trademarks and infringing copyrights, it is up to the option of respective country as to whether there should be criminal punishment for a patent infringement.  Since in the oceanic system, the patent infringement merely involves in a civil liability and there are few cases in the continental system to incur a criminal liability thereby, the penalties for patent infringement should be abolished.

Penalties for invention have been abolished on October 24, 2001 while those for utility model and design are maintained, which is unreasonable since the technical level for utility model and design is lower than that of invention, which will result in unfairness and illogicality in weighing the matter.

Especially, the substantive examination for utility model has been abolished so that it is uncertain whether a utility model patent does meet with the substantive requirements.  Since the national of this country is prone to resort to the investigation rights, e.g. searching or seizing the property, of a public prosecutor to act against the competitors through the penal articles, it is easy to result in irreparable damages to the competitors in business or reputation so that penalties should be abolished.

*Transition clauses (Paragraph 2 of Article 134 and Article 138)

Since the durations of patent terms for invention, utility model and design are different in various law amendments, there should be standards as to how the patent terms of patents allowed in different periods should be counted.  In this regard, please refer to various amended articles if interested.

Amended Article 138 provides that “except Article 11 of this Law which shall take effect on the date of its promulgation, the effective date of the rest articles shall be designated by Executive Yuan.”  This is because several significant amendments have been made so that there must be time for the preparation of the administrative organizations and for the understanding and accommodation of the relevant sectors.

Claims We Have:

1. To escape from the shortcomings of a system, e.g. the opposition system is not necessitated to abolish the (opposition) system.  Similarly, abolishing a system, e.g. the opposition system needs not be a must to obviate the shortcomings accompanying the opposition system.

2. Having solved a problem in appearance needs not necessarily have really solved to the root of the phenomenon we are troubled while it is believed to be very controversial as to what is an ultimate solution to the core for the problem.  As a matter of fact, whether a problem in a system is really a problem is a problem.  Specifically, edging into the situation constructed by troubling phenomena in a correct manner to find real problems to be dealt with and solved in a right style is never a simple science.  Fortunately, the patent law gets more and more harmonized, which means that with the brainwave input and wisdom contribution from patent experts all over the world, it appears to be safe for us to take that amending a local patent law to be in more compliance with an internationally harmonized patent practice normally will not get a real trouble.

3. The word ‘scope’ in the patent system includes ‘scope of claims’ and ‘scope of disclosure.’  Accordingly, the scope disclosed by the original specification will theoretically include CLAIM SCOPE, SPECIFICATION SCOPE and DIFFERENCE SCOPE representing the difference between the former two.  The latter DIFFERENCE SCOPE includes that discarded by the applicant, that not originally claimed but desired to be subsequently claimed and granted by law (RECOVERABLE SCOPE), and that not originally claimed but desired to be subsequently claimed and forbidden by law (FORBIDDEN SCOPE).

4. It should be relatively easier for us to believe that before earlier publication or post-grant publication, it should be under our comfortable reliance that it is justified for us to permit a DIFFERENCE SCOPE to be shifted into the CLAIM SCOPE by such time.  The later the supplement or amendment is made after the earlier publication or post-grant publication, the more difficult or reluctant we will feel it comfortable to permit such supplement or amendment.  We tend to advocate that we should allow supplement or amend in the time period after earlier publication but before post-grant publication.  Our position will not change even in the period between the receipt of an allowing action and the post-grant publication.

5. It shall never be difficult to find conflicts or unjustness in the laws, e.g. although there exist those which are prohibited to be considered in the previous stage of administrative disputes or remedies but can come naturally into the purview of review by the higher authority or the court, said those are never duly considered by said previous stage or competently reviewed by the court.  People can live on earth better only when officials diligently find here and there whether what kind of law amendment can relieve such hardship.

6. It is interesting to consider or discuss the differences between the provisional protection of a patent and the formal protection of the registered utility model without a technical report, the differences between no protection and the formal protection of the registered utility model without a technical report and the differences between the technical report and the substantive examination through which we can find or understand better what are advantages and disadvantages of the registration system of a utility model or whether the utility model should adopt the registration system?