A draft amendment to the current Patent Act were approved by the Executive Yuan on December 3, 2009, and passed the 3rd reading review by the Legislative Yuan on November 29, 2011. The President announced the new Patent Act on December 21, 2011, which includes a total of 159 articles (108 amended articles, 36 newly added articles and 15 deleted articles). The new Patent Act is expected to take effect on January 1, 2013.
The new Patent Act involves a number of changes of patent practice, including revising the Enforcement Rules of the Current Act, Examination Guidelines, amending and formulating the relevant patent regulations, various patent application forms and so on. Among the amendments announced by TIPO, relevant regulations involved in the invalidation actions have a sea change in both proceeding and operation, which are predicted to substantially affect the rights of patentees. The significant changes to the current invalidation system are summarized as following:
Aninvalidationbrief (statement) shall not be modified or added after filing, but it can be narrowed.
Aninvalidation action shall be submitted withan invalidation statement and reasons, and accompanied by evidence. Once theinvalidationaction is filed with the TIPO, the claims listed by the invalidation petitioner to seek challenges against the patentee shall be specified and shall not be modified or added, but reducing the numbers of challenged claims is allowable. After filing, the reason and evidence to the invalidation shall be submitted within 30 days in order not to delay the review process. To explain the relation between the fact and evidence submitted, the reasons in the invalidation statement should include the specification of fact and the provisions on which the invalidation action is based. (For details, please see Article 73 of the new Patent Act)
TIPO is not entitled to revoke patents ex officio.
In the current Patent Law, the TIPO has the power to initiate an invalidation action to revoke a patent from a patentee, without waiting for a third party to bring an invalidation action. The new Patent Act considers that the validity of a patent is a matter of private dispute which the TIPO should leave to the invalidation petitioner and the patentee. Accordingly, the new Patent Act removes the power of revoking a patent from the TIPO.
Despite that, the new Patent Act still empowers the TIPO to review the invalidation action, especially when the TIPO discovers reasons and evidence supporting the revocation, whereby the TIPO may, ex officio, review the reasons and evidence which are raised within the scope of the invalidation statement but not submitted by the invalidation petitioner. The TIPO shall notify the patentee to file a defense against the TIPO’s findings within a specific time limit. That the TIPO may review the reasons and evidence ex officio to proceed to revoke the patent is a new approach different from the current Patent Act, which limits TIPO to examine solely the reasons and evidence submitted by the invalidation petitioner. (Article 75 of the new Patent Act)
Consolidation of the examination (Articles 77-78 of the new Patent Act)
If, during the invalidation proceedings, a request for amendment is filed, TIPO shall consolidate their examination of said proceedings and amendment. Similarly, when a patent is the subject of two or more invalidation actions filed against the same patent, TIPO may consolidate their examination of the individual invalidation petition as needed. Under the consolidation of the examination, the invalidation decision issued by the TIPO shall be rendered jointly.
Where an invalidation action against patentee is considered well grounded, the rights of the patentee shall be invalidated. Such invalidation may be made on a claim-by-claim basis. (Article 82 of the new Patent Act)
To increase administrative efficiency and to meet the international trend, under the new Patent Act, an invalidation petitioner may request TIPO to invalidate all claims of a patent, or only request part of the claims of the same patent be invalidated. Accordingly, if an invalidation action is considered well grounded, the invalidation decision issued by the TIPO shall be rendered on a claim-by-claim basis.
As to the amendment to Examination Guidelines (including five chapters for Patent Procedural Examination, Invention Patent Applications, Utility Model Patent Applications, Design Patent Applications, Patent Invalidation Actions), the TIPO just announced the latest edition for Chapter 2 “Examination Guidelines for Invention Patent Applications” on October 25, 2012. It is believed that the TIPO will finish the rest of the work of the amendment to Examination Guideline soon so as to be contemporary with the new Patent Act of 2013.
