Draft amendments to Taiwan’s Patent Act is far-reaching and revolutionary
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Draft amendments to Taiwan’s Patent Act is far-reaching and revolutionary

icons8-team-dhztnlvne8m-unsplash.jpg

Jun-yan Wu of Saint Island International Patent & Law Offices discusses the introduction of potential changes to Taiwan’s Patent Act that will overhaul the existing legal framework

Taiwan’s IP Office published a draft amendment to some provisions of the Patent Act on December 30 2020. It substantially changes the current examination and re-examination processes concerning patent applications and invalidation cases, as well as related remedial procedures.

At present, Taiwan has a two-stage examination system: preliminary examination by one examiner and re-examination by a second examiner. At either stage, if the examiner intends to reject a patent application, they will issue at least one official letter to allow the applicant to optionally file observations/amendments before issuing the formal rejection.

According to the draft amendment, a committee, operating under the name of ’Committee for Review and Dispute Resolution’ will be set up to replace the existing re-examination mechanism to review all cases formally rejected at the preliminary stage.

The second role that the committee plays is to examine invalidation actions so that an invalidation case is not examined by a single examiner, as is the current practice. According to the draft, examination of invalidation actions will be conducted primarily through oral hearings, and the decisions rendered by the committee are final and conclusive.

The committee is composed of senior patent examiners and legal experts designated by the IP office to ensure that the cases under the committee’s review/examination are handled with professional excellence. ’Legal experts’ refer to staff members of the IP office who have substantial experience dealing with legal affairs, and matters related to appeal or litigation.

Specifically, three or five members from the committee will form a panel which conducts the review/examination matters; one of them is to be appointed as the presiding examiner to coordinate overall matters and ensure that the review/examination process is conducted efficiently. If a case brought to the committee’s review relates to a formally dismissed procedure of simple nature, it may be exceptionally examined and decided by a single member appointed by the committee.

In general, the types of cases to be reviewed/examined by the committee include the following:

  • Formally rejected patent applications;

  • Formally rejected applications for patent term extension;

  • Amendments;

  • Other formally dismissed procedures;

  • Invalidation actions; and

  • Invalidation actions against the granted patent term extensions.

Another significant change introduced into the draft amendment is the abolishment of appeal proceedings.

If the applicant of an application or the losing party of an invalidation action is dissatisfied with a decision rendered by the committee, the applicant can no longer attend appeal proceedings but should directly file a litigation with the court to seek judicial review of the decision. The court system for judicial review remains to be a two-instance system; however, the litigation will shift from administrative to civil proceedings.

The draft amendment is far-reaching and revolutionary. It will bring about an overhaul to the existing legal framework and practice and thus necessitates extensive revision to enforcement rules, examination guidelines, etc.

As the draft amendment is still in a preliminary form and the specifics of the amendment have yet to be finalised, it might take several years for the draft to go through the legislative process and come into force.

Jun-yan Wu

Attorney, Saint Island International Patent & Law Offices

E: siiplo@mail.saint-island.com.tw


more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article