CHUN-YU LIN[1]

Draft amendments to parts of the Patent Act proposed by TIPO were endorsed by the Executive Council on August 4, 2016. The key points of the amendments to the Patent Act are summarized below:

1. The restrictions on the grace period and the conditions about the publication of the invention are loosened. In addition, in response to the request from the industries, the requirement that the applicant has to claim the grace period at the time of filing is deleted.
2. A system to extend the patent term as a compensation for delayed prosecutions is introduced. If the prosecution of a patent application is unreasonably delayed, the applicant may request the extension of the patent term.
3. A system of patent linkage is introduced in accordance with the amendments to the Pharmaceutical Affairs Act. It is specifically stipulated that during the registration procedures of generic drugs, the patentee of a new drug patent can file an appeal to clarify whether the generic drug infringes the patent right of the new drug patent.

Considering the fact that the amendments to loosen relevant requirements of the grace period are beneficial for the applicants to protect the inventions by means of patent rights, the amendments are planned to become effective immediately after the amendments are passed. With regard to the amendments to the other two issues, the Executive Yuan will decide the date of enforcement depending on the progress of the TPP and auxiliary works.