Taiwan’s patent system is undergoing significant transformation, driven by the rapid evolution of technology and the need to align more closely with international standards. In November 2024, the Taiwan Intellectual Property Office (TIPO) released a legislative proposal outlining six key amendments to the Patent Act. These reforms focus on enhancing the protection of design patents, increasing procedural flexibility, and clarifying the legal mechanisms available to rightful patent holders in the face of modern IP challenges.

This article explores each of these proposed amendments in detail and highlights their significance to domestic industries and international stakeholders.

1. Expanding Design Patent Protection to Digital Images

One of the most innovative features of the draft amendments is the expansion of design patent eligibility to include purely digital images. Under the current system, design patents must be applied to a “physical article.” This restricts protection for visual designs to user interfaces and icons used on tangible devices.

The amendment aims to remove this limitation. If adopted, it will allow applicants to seek protection for images generated by software, even if they are not tied to a specific device. This would include GUI animations, virtual objects used in augmented or virtual reality environments, and designs relevant to the metaverse.

To prevent abuse, the amendment also clarifies that purely functional images and those contrary to public order or morality will remain unpatentable. Additionally, Article 136 of the draft clearly separates infringement acts related to physical goods from those applicable to digital content, enabling enforcement against the unauthorized online use or distribution of protected designs.

This legislative change reflects global trends, aligning Taiwan with countries like Japan and South Korea, where digital designs are independently protected, and meets the needs of a rapidly growing digital economy.

2. Extending the Grace Period for Design Patent Applications

Another important update is the extension of the grace period for design applications from six months to twelve months. This revision brings Taiwan into harmony with leading jurisdictions such as the United States, Japan, and the European Union, all of which offer a 12-month grace period.

In practical terms, this means that inventors who publicly disclose their design (for instance, by launching a product or attending a trade fair) have up to one year to file a design patent application without jeopardizing novelty. This offers companies greater flexibility in their marketing and development timelines and encourages international filings in Taiwan by reducing the risk of unintentional disclosure.

3. Introducing a Unified Application for Multiple Similar Designs

Under the current Patent Act in Taiwan, applicants are required to file separate applications for each individual design or utilize the derivative design system. However, in practice, it is common for multiple design variations to be developed from a single creative concept—for instance, within a coordinated product line featuring stylistic differences.

To address this industrial reality, the proposed amendments introduce a mechanism that permits the filing of multiple similar designs under a single application. Applicants may designate one design as the principal design, with the remaining designs submitted as related variations. This reform aligns Taiwan’s legal framework with international practices, including those under the Hague Agreement and the European Union design system.

Each design included in the combined application will still undergo separate substantive examination and may be individually contested, thereby maintaining legal certainty while offering applicants greater procedural flexibility.

4. Relaxing the Timing for Divisional Design Applications

Under the existing system, divisional applications must be filed before the issuance of a final approval. Once a Design is granted, applicants are no longer able to file a divisional case, which limits flexibility in managing design portfolios.

The proposed amendment extends this right by allowing divisional applications to be submitted up to three months after the notice of approval or re-examination decision. This provides inventors with an additional opportunity to secure protection for alternative embodiments disclosed in the original filing. The reform supports strategic IP planning and aligns with practices in several other advanced IP jurisdictions.

5. Clarifying Dispute Resolution Over Patent Ownership

Disputes over patent rights can often be complex and contentious. Previously, Taiwan allowed rightful owners to file an invalidation action against a wrongly granted patent and reapply for the same invention within two months of the decision.

However, this administrative route raised concerns over efficiency and certainty. To address these issues, the amendment abolishes the invalidation-based remedy. Moving forward, ownership disputes will need to be resolved exclusively through civil litigation, mediation, or arbitration.

To ensure procedural fairness, additional safeguards have been included. These include the ability to pause examination and other procedures during ongoing legal disputes (Article 10), and provisions preventing nominal owners from abandoning the patent right while litigation is ongoing (Article 69). These updates provide more transparent and judicially accountable means of resolving rights disputes.

6. Transitional Provisions for Legal Stability

The amendments include carefully crafted transitional provisions. For instance, the 12-month grace period and combined application system for similar designs will only apply to applications filed after the law takes effect. Furthermore, any ongoing invalidation actions based on ownership issues that remain undecided at that time will be considered withdrawn.

These provisions are designed to preserve legal certainty and prevent disputes over the retroactive application of new rules.

Conclusion

TIPO’s 2024 Patent Act amendment package reflects a thoughtful response to the evolving landscape of design and innovation. By embracing digital design protection, increasing harmonization with international norms, and simplifying administrative procedures, Taiwan is reinforcing its role as a progressive and business-friendly IP jurisdiction.

International applicants, particularly those in digital services, consumer electronics, and design-intensive industries, will benefit from broader protection, more flexible filing strategies, and increased legal predictability. As the reforms move forward, stakeholders are encouraged to monitor developments and adjust their Taiwan IP strategies accordingly.

 

 

Reference:

[1] Taiwan Intellectual Property Office (TIPO), “Patent Law Amendments – Public Hearing Presentation,” November 2024. Retrieved from https://www.tipo.gov.tw/tw/cp-85-993588-bdc06-1.html