HARRIET I. J. CHEN

Introduction
Taiwan uses the “first-to file” patent system[1], and so patent attorneys here always recommend patent applicants to file their patent applications as soon as possible. Publishing before filing a patent application usually leads to failure in meeting the novelty requirement of the invention or creation claimed in the patent application since the novelty requirement of the Taiwan patent laws are heavily weighted against early publication. However, before filing patent applications, patent applicants may need to publicly disclose their inventions, utility models or designs for business or academic concerns. For example, academic researchers have always found it necessary to publish the results of their scientific researches, since publications are important for research funding and promotion. In consideration of the needs in industries and academic organizations and harmonizing the laws and practice of the United States, Japan and Korea[2], the Taiwan Patent Act was amended to loosen requirements for claiming the grace period for novelty and inventive step.

The amendment to the Patent Act regarding the grace period for novelty and inventive step was promulgated on January 18, 2017. The amended Patent Act took effect on May 1, 2017 and applies to patent applications filed on or after the date. The Taiwan Intellectual Property Office also amended the relevant Enforcement Rules of the Patent Act for such newly amended Patent Act, and the amended Enforcement Rules of the Patent Act also took effect on May 1, 2017.

Provisions before amendments
To be granted a patent, the invention, utility model or design claimed in a patent application must fulfill the requirements for novelty and inventive step set forth in Article 22 (for invention or utility model applications) or Article 122 (for design applications) of the Patent Act. According to Article 122 of the Patent Act before amendment, a grace period claim for invention or utility model patent application was allowed only if the concerned prior public disclosure was one of the following events[3]:
experiment purposes (applicable to invention and utility model patent applications only);
print publication;
display at an exhibition sponsored or recognized by the government; or
an involuntary public disclosure against the will of the patent applicant.
For a design patent application, a grace period claim was allowed only for the following events as stipulated in Article 122 of the Patent Act[4]:
the design was published in a printed publication;
the design was displayed at an exhibition sponsored or recognized by the government of Taiwan, the Republic of China; or
the design was disclosed without the consent of the applicant.

Furthermore, to claim a grace period, the patent application must be filed within six months from the date of occurrence of any of the abovementioned events; otherwise, the grace period claim would not be allowed.

Provisions after amendments
After amendment, the events for claiming grace periods are expanded and the grace periods for an invention and utility model patent application are also extended.

According to Paragraph III of Article 22 of the Patent Act[5],
“A disclosure made by or against the applicant’s will shall not be deemed as one of the circumstances that would preclude the grant of an invention patent prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, provided that the concerned patent application is filed within twelve (12) months after the date of the disclosure.”
According to Paragraph III of Article 122 of the Patent Act[6],
“A disclosure made by or against the applicant’s will shall not be deemed as one of the circumstances that would preclude the grant of an design patent prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, provided that the concerned patent application is filed within six (6) months after the date of the disclosure.”

In view of the foregoing amended Patent Act, the limitations as to the categories of public disclosure for claiming grace period are removed. The public disclosure is not limited to that made by the patent applicant and it also includes public disclosure consented to by the patent applicant. However, a laid-open publication of a patent application or granted patent publication in Taiwan or any other foreign country is considered “Public disclosure originated from the patent applicant’s intent” as provided in foregoing Article 22 and 122 of the amended Patent Act and thus does not form a justified basis for claiming a grace period. Further, the grace period for filing an invention or utility model patent application has been extended from six months to twelve months from the date on which the concerned disclosure of invention or utility model occurred; however, the grace period for filing a design patent application remain six months from the occurrence of the concerned disclosure of design.

Articles 15 and 48 of the amended Enforcement Rules of the Patent Act were amended as following[7]:
"Where a patent applicant receives the right to apply for the patent due to inheritance, assignment, employment or a fund-providing arrangement, if the concerned invention, utility model or design has been publicly disclosed before patent filing by the deceased, assignor, employee or the person hired in the fund-providing arrangement, a grace period can be claimed based on such prior public disclosure."

Moreover, Item 3 of Paragraph I of Article 59 of the Patent Act was correspondingly amended to be[8]:
“3. Acts done by a person who has been exploiting the invention or making all the necessary preparations for doing such act in this country before the filing date of the invention. However, this provision shall not apply where the person has learned of the invention from the patent applicant for less than twelve (12) months and the patent applicant has made a statement reserving , his/her right to a patent being granted;”.

It should be noted that, the information included in the legislation explanation in the amendment bill[9] further explains that meanings of “public disclosure against the patent applicant's intent” as prescribed in the amended Patent Act. That is, “public disclosure against the patent applicant’s intent” includes the event where the invention, utility model or design has been disclosed caused by the patent applicant, but the patent applicant does not personally make such disclosure. If the content of a patent application is stolen and is then publicly disclosed, such disclosure would be deemed to be “public disclosure against the patent applicant’s intent”. The “public disclosure against the patent applicant's intent” also applies to the events where the public disclosure is due to a misunderstanding or negligence to the applicant’s intent. The amendment bill provides two examples:
The patent applicant understands that a third party is under a confidentiality obligation and discloses the contents of patent application to the third party; however, the applicant’s understanding is not correct.
The patent applicant does not intend to disclose the contents of the patent application; however, the persons or agents hired by the applicant publicly disclose the contents due to misunderstanding or negligence to the applicant’s intent.

Suggestions and Conclusions
There are some issues which need to be further elucidated. The applicant’s erroneous understanding in example (1) and the misunderstanding or negligence in example (2) may be due to the fact that the applicant fails to pay attention to reasonable care or the applicant has paid attention to reasonable care but has made a mistake or has been cheated. Whether such circumstances fall into the scope of “public disclosure against the patent applicant’s intent” shall still have to be clarified.

As mentioned in the foregoing, the grace period for filing an invention or utility model patent application has been expanded while the grace for filing a design patent application has not. Although the preparation for filing a design patent application may be shorter than that for filing an invention or utility model patent application, the other concerns for expanding the grace period for design patent application still exist. Further expanding the grace period for filing a design patent application to be the same as the grace period for an invention or utility model patent application can be put into consideration.

For a medium-sized enterprise, the four circumstances for claiming grace period as stipulated in the Patent Act before amendment may not be useful. Before the amendment, it is not common for a patent applicant to claim grace period based on the circumstances prescribed in the Patent Act. The amended Patent Act provides a room for a patent applicant who has the need to claim a grace period to balance between marketing and patent filing and such expansion is certainly beneficial to patent applicants.