The Taiwan Intellectual Property Office (TIPO) announced the Draft Amendment to Certain Articles of the Patent Act on September 11 2024 (the Draft Amendment), explaining that its primary goal is to respond to the rapid growth of emerging digital industries and the increasing diversity in image design through digital technology.
Furthermore, by aligning with international trends with respect to design protection and considering the practical needs of industry, a revision of the design patent system to establish a more comprehensive framework is proposed. In the meantime, with reference to the most recent judicial practice, necessary amendments have been made so that the rightful patent applicants can reclaim their rights through civil procedures.
Notable provisions in the Draft Amendment
Specifically, the Draft Amendment focuses on two main areas.
The relaxation of several restrictions on design patent protection, which includes the following:
An expansion of the scope of design protection – the scope will be broadened to include image designs created using digital technology, and lift the restriction that image designs must apply to “articles”.
Allowing for a consolidated application for similar designs – a “consolidated application for multiple similar designs” system will be introduced by amending the relevant stipulations on revisions, invalidation proceedings, and other related matters.
An extension of the grace period from six months to 12 months within which to file a design application, irrespective of the prior publication or disclosure of the design.
An extension of the time limit to file divisional design applications. A divisional application may be filed within three months from receipt of the approval of a design application or a re-examination decision, among other provisions.
Disputes over the right to apply for a patent and patent rights shall be solely resolved through civil procedures. The Draft Amendment has added relevant provisions to exclude disputes over “the right to apply for a patent” or “the ownership of patent rights” as a ground for invalidation, clearly stipulating that a rightful patent applicant should resolve such disputes through civil procedures to reclaim their rights.
It is also noteworthy that the Draft Amendment no longer includes any provision related to the consolidation of relief levels or adversarial review systems, as contained in the Amendment to the Patent Act submitted by the Executive Yuan to the Legislative Yuan in March 2023. For instance, the Draft Amendment does not stick to the consolidation of relief levels and the establishment of an adversarial review system, including the founding of an Appeal and Dispute Review Committee and the abolition of administrative appeal remedies in the event of dissatisfaction with the final rejection rendered by the TIPO. In other words, the creation of specialised appeal litigation and dispute litigation systems is no longer an option.
Furthermore, the Draft Amendment does not include any provisions to shift remedial actions from an administrative procedure to a procedure analogous to civil litigation. Consequently, the Supreme Administrative Court, rather than the Supreme Court, remains designated as the court of final appeal.
The proposal of the consolidation of relief levels and an adversarial review system can be traced back to 2001 and has undergone multiple discussions, and faced various challenges in hearings. After approval by the Executive Yuan, the proposed amendment was submitted to the Legislative Yuan for review but was ultimately aborted due to the expiry of the legislative session, without further examination.
This time, the Draft Amendment proposes the removal of the relevant stipulations on consolidating relief levels and an adversarial review system, which suggests a shift away from this once widely discussed amendment direction.
All eyes on the further development of the Draft Amendment
The Draft Amendment, although not as controversial as the amended version of March 2023, still contains some contentious issues. For example, there are divided opinions concerning the resolution of disputes over the right to apply for a patent and patent ownership through administrative or civil proceedings. Therefore, the subsequent development of the Draft Amendment requires further close observation.
