The Taiwan Intellectual Property Office (hereinafter referred to as “TIPO”) released the 2nd version of the draft amendments to Taiwan Patent Law on June 22, 2021. Compared with the 1st version, the 2nd version is more relaxed on some time-period requirements.

 

I. A divisional application can be filed within 2 months after the date that the final decision of rejection is made

 

Under the current Taiwan Patent Law, the applicant of a patent application can only file a division within one of the following time periods:

 

1. before a final reexamination decision on the original patent application is rendered; or
2. within 3 months after the date on which an approval decision for the original patent application or reexamination is served.

 

In other words, once the applicant of the patent application receives a final rejection made by TIPO, the applicant is not allowed to file a division of the patent application.

 

According to the latest draft amendments, a division can be filed within any one of the following time periods:

 

1. before a final decision (made by TIPO) on the original patent application is rendered;
2. within 3 months after the date on which an approval decision (made by TIPO) for the original patent application is served;
3. within 2 months after the date on which a final rejection decision (made by TIPO) for the original patent application is served;
4. before a final rejection decision on the original patent application is rendered (by Patent Re-examination and Appeal Board); or
5. within 3 months after the date on which an approval decision (made by Patent Reexamination and Appeal Board) for the original patent application is served.

 

In the draft amendments, the proceedings of reexamination and appeal will be combined as a new single proceeding called “Reexamination and Appeal Review”. Once the applicant receives the final rejection decision made by TIPO, the applicant could file a request for reexamination to request the Patent Reexamination and Appeal Board (hereinafter referred to as “PRAB”) to review his patent application. The PRAB would be comprised of three or five examiners or persons with legal expertise designated by the TIPO. The PRAB’s jurisdiction is quite broad, and covers relief actions arising from rejected or objected patent applications as well as disputes arising from patent invalidation actions. Any party who is dissatisfied with the decision made by the PRAB is legitimately allowed to file a “civil lawsuit” to ask the Intellectual Property and Commercial Court to dismiss the decision(s) made by PRAB and/or TIPO.

 

II. Strengthening protection of the legitimate applicant

 

Under the current Taiwan patent law, parties in a dispute concerning ownership of a patent application can file a civil lawsuit or file a request for arbitration to resolve the dispute. However, while the lawsuit or the arbitration is continuing, the examination of the patent application will not cease, which may result, for the legitimate applicant, in a patent application which is not well dealt with during prosecution. In the draft amendments, if a patent application is involved in litigation or arbitration due to an ownership dispute, any of the parties in the litigation or in the arbitration can file a request to TIPO to suspend the examination proceeding. Once the TIPO receives the request, it shall suspend the examination of the patent application involved in the litigation or the arbitration for one year, unless the cause for suspension no longer exists. If necessary, the party concerned can also file a request to extend the period of suspension.

 

III. Extending the grace period of a design patent from 6 months to 12 months

 

Under the current Taiwan patent law, the grace period for an invention application or a utility model application is 12 months, and the grace period applies regardless of whether the disclosure is made intentionally or unintentionally by the applicant, unless the disclosure was a publication of a patent application filed by the legitimate applicant. In comparison however, the grace period for a design application is only 6 months. In order to strengthen the protection of design patents, the grace period for a design application is extended from 6 months to 12 months in the draft amendments.

 

*Erratum notice: This article is a follow-up to the article titled “Summary of Draft amendments to Taiwan’s Patent Law” published in the earlier issue No. 21. In the earlier published article, it was incorrectly stated that the “priority period” of a design patent is extended from 6 months to 12 months.