On November 29 2011, Congress passed the biggest amendment of the decade to Taiwan Patent Law. While the effective date is still undetermined, it would be best for applicants to make early preparations for the changes to come. The most significant change relates to the design patent, now renamed as such and encompassing a wider subject matter including icons and GUIs, derivative designs, and a portion of an article with specific design features or multiple articles of the same category that are customarily sold as a set.
Pharmaceutical patent applicants will be interested to know that supplementary patent certificates are given more lucid regulations, including that only one patent extension term is permitted and ought to be based on the first government approval, which again can be used for a patent extension only once. Generic drug companies, on the other hand, will be happy to note that no infringement will result from research, trials, and other necessary acts (such as pre-clinical trials and clinical trials), if they are conducted for the purpose of obtaining local pharmaceutical registration or foreign marketing approval.
Prosecution and invalidation actions will see more de-regulation and flexibility. For example, the six-month grace period for patent filing will also apply to an applicant's publication, even of a non-experimental or commercial nature. Applicants who unintentionally fail to claim a priority date and even patentees who unintentionally let the maintenance fee lapse will have a chance to be rescued by a special resumption proceeding. Provisional applications will be allowed to be filed within 30 days after a preliminary issuance of the patent. Translation errors will first enter the lists of amendment and even post-amendment of specifications and claims. Challengers of the patent may attack the validity of a particular claim and the patent office will need to render its decision on a claim-by-claim basis.
There will be changes in the landscape of patent infringement, with reasonable royalty becoming an additional option for patentees when calculating damages, alongside lost profits and the infringer's profit. Under the infringer's profit approach, defendants will no longer bear the burden of proving its overhead costs as the current law requires. Meanwhile, the new act removes punitive damages for intentional infringement, but stresses that damages claims will not stand where the defendant lacks negligence.
It is generally believed that these amendments will become effective one year after their enactment.
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| Tony Tung-Yang Chang
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Saint Island International Patent & Law Offices
7th Floor, No.248, Section 3
Nanking East Road
Taipei 105-45
Taiwan, ROC
Tel: +886 2 2775 1823
Fax: +886 2 2731 6377
siiplo@mail.saint-island.com.tw
www.saint-island.com.tw