APAA e-Newsletter (Issue No. 21, February 2021)

Summary of Draft Amendments to Taiwan’s Patent Law

Ronald C.Y. Tsai, Wideband IP Office (Taiwan)

The Taiwan Intellectual Property Office (“TIPO”) has announced a draft amendment to Taiwan’s Patent Law on December 30, 2020 and held public hearings on January 19th, 25th and 29th, 2021.  The draft amendment primarily include two points as follows: (1) changing examination and relief procedures of patent applications; and (2) extending the priority period of a design patent from 6 months to 12 months.

Changing Examination and Relief Procedures of Patent Applications

Under the current Taiwanese patent law, once an applicant of a patent application receives a final decision of rejection made by TIPO at the stage of examination, the applicant can file a request for re-examination to request TIPO to open a new examination proceeding to review his patent application by another examiner.  In other words, the patent application could be reviewed by two different examiners. If the applicant cannot persuade the examiner to grant his patent application at the re-examination stage, he could file an appeal to the Ministry of Economic Affairs (hereinafter referred to as “the MOEA”) to request the MOEA to dismiss the TIPO’s decision of rejection. And if the applicant dissatisfied the decision of MOEA, he could file an administrative lawsuit to ask the intellectual property court (hereinafter referred to as “the IPC”) to dismiss the MOEA and TIPO’s decisions.

According to the draft amendments, the proceedings of re-examination and appeal are repealed (or combined).  Once the applicant receives the final decision of rejection at the examination stage, the applicant could file a request for re-examination to request “Patent Re-examination and Dispute Board” (the official name of the board has not been announced) to review his patent application.  The “Patent Re-examination and Dispute Board” (hereinafter referred to as “PRDB”) would be composed of three or five examiners or persons with legal expertise designated by the TIPO. The PRDB’s jurisdiction is quite broad, which covers relief actions arising from rejected or objected patent applications as well as disputes arising from patent invalidation actions. Any party who dissatisfies the decision made by the PRDB is legitimately allowed to file a “civil lawsuit” to ask the IPC to dismiss the MOEA and TIPO’s decisions.

Extending the Priority Period of a Design Patent from 6 Months to 12 Months.

Under the current Taiwanese patent law, where an applicant has first applied for a design patent in a foreign country, which reciprocally allows Taiwan nationals to claim priority, or with any member of the World Trade Organization (WTO), the applicant may claim priority in respect of a Taiwan design patent application for the same invention if the Taiwan design patent application for the same invention is filed within 6 months after the filing date of the said first design patent application.

In order to strengthen the protection of design patents, the priority period of a design patent is extended from 6 months to 12 months in the draft amendments.