The Legislative Yuan completed the third reading of the Patent Act amendment on November 29, 2011. The revised Patent Act comprises 159 articles, wherein 108 original articles have been amended, 36 new articles have been added, and 15 original articles have been deleted. The Executive Yuan shall decide the date on which this Act takes effect, which is expected to be one year from now.
The key amendments are listed as follows:
(a) applicants are allowed to claim the grace period due to the printed publication published in his/her own intention;
(b) a reinstatement mechanism is incorporated for the situation where, without intent, no priority claim is made when filing and the situation where the applicant,without intent, fails to pay the fees for Letters Patent and annuitiesprior to the statutory deadlines;
(c) the claim(s) and abstract are separated from the specification;
(d) the time limit for the voluntary amendments is removed and a divisional invention patent application can be filed within 30 days from the date on which a parent application is allowed in the primary examination;
(e) items of patent exemption are added, such as the non-public activities made for non-commercial purpose; and the research, trial and necessary acts thereof which is (are) conducted for the purpose of obtaining the market approval of pharmaceutical(s); and clearly adopts the international exhaustion doctrine;
(f) the provision of the patent term extension for the pharmaceuticals or agrichemicals is amended;
(g) the provisions of the conditions, procedures and compensation of the compulsory licensing are amended;
(h) provision is added of applying for compulsory licensing to manufacture and export pharmaceutical(s) to the developing country or less developed country in need to help them solve public health problems;
(i) the patent invalidation system is amended, for example, abolishing the ex officio invalidation action, allowing invalidation of only selected claims, merging the examinations and decisions of invalidation application(s) and amendment application(s);
(j) the subjective requirements of claiming for damages due to patent infringement, the methods of calculating the damages and the provision of patent marking are amended;
(k) the provision is added of filing an invention patent application and a utility model application for the same creation by the same applicant on the same day, when the invention patent application is deemed patentable, the TIPO will notify the applicant to elect one of the applications, where the invention patent application is elected, the utility model patent right shall be deemed non-existent ab initio;
(l) partial designs, computer generated icons, graphic user interfaces (GUI) and designs that apply to the articles sold or used as a set in custom are accepted, and a derivative design system is added.
The draft amendment proposed by the Executive Yuan was intended to accept animals and plants as patentable items. However, due to the inabilty to reach consensus, this amendment to the Patent Act does not remove the animals and plants from the current list of unpatentable items.
The revised Patent Act involves many changes in the patent system. In order to enable the public to fully understand and adapt to the revised patent system, the Executive Yuan shall decide the date on which the revised Patent Act takes effect. In addition, the TIPO has been actively undergoing the revision of supporting measures, including related statutory regulations, examination guidelines, application forms and computer systems.
