BY CHIA-HSIUNG LIU

On December 30, 2020, the Taiwan Intellectual Property Office (TIPO) released a draft amendment of the Patent Act and received 136 suggestions for further amendments. After considering the feedback, the TIPO released a second draft amendment of the Patent Act on June 22, 2021, in which 97 articles are amended.

Comparing the first and second draft amendments, the major adjustments are listed below:
1. The time period for submitting a divisional application is extended:
An applicant can apply for a division within two months after receiving the rejection Office Action and in the re-examination stage.
2. Regulations governing civil disputes regarding patent ownership:
An applicant may request the TIPO to suspend the examination, the deliberation, and/or other actions affecting the patent rights after a prosecution, a mediation and/or an arbitration are conducted.
3. The possibility to raise new matters in the litigation stage:

Considering the special characteristics of a patent invalidation, an invalidator or a third party can raise new matters and/or submit new evidence in the litigation stage in order to improve the efficiency of the relief.

4. The clarity of judgments in a dispute litigation:
Because patent dispute is a new type of litigation, in order to further facilitate the processes, the regulations governing judgments are clearly defined.

 (Summarized and translated from the News published on the TIPO’s website)
*International Patent Division of Tai E International Patent & Law Office