Law & Regulation Development 2019

Before the new Patent Act, a divisional application can only be filed within 30 days after receipt of an allowance decision for an invention application.  Now the rules have been relaxed to 3 months after receipt of an allowance decision for an application granted no matter at primary or secondary examination stage.  Added to that, utility model applications also apply.

(Articles 34-1-2, 34-5, 34-8 & 107 of the Patent Act)

①Deadlines for Supplementing Invalidation Reasons/Evidence.

Before the new Patent Act, an invalidation petitioner shall supplement invalidation reasons or evidence within one month from the invalidation date.  However, there is a proviso that reasons or evidence supplemented before the decision is rendered shall be considered, which results in practically no limit to the deadline of such supplements.  Actually, there are quite a few invalidation proceedings which are seriously delayed.  To solve this problem, the new Patent Act stipulates that, reasons or evidence submitted after the deadline shall not be considered, and the deadline is extended from one month to three months.  (Article 73-4 of the Patent Act)

②Deadline for an invalidation petitioner to express opinions on post-grant amendments and deadline for a patentee to file a supplementary response or express opinions on the rejections of post-grant amendments.

When considered necessary, TIPO may notify (1) an invalidation petitioner to express opinions on post-grant amendments; or (2) a patentee to file a supplementary response or express opinions on the rejections of post-grant amendments.  Upon receipt of such notifications, an invalidation petitioner or a patentee shall submit related documents within one month.  (Article 74-4 of the Patent Act)

③Occasions for a patentee to file post-grant amendments during an invalidation proceeding

During an invalidation proceeding, a patentee shall only file a post-grant amendment request during the periods of submitting a response, a supplementary response and opinions on the rejections of post-grant amendments.  However, the above shall not apply if a litigation involving said patent is pending. (Article 74-3 of the Patent Act)

Since a utility model patent has not been subject to a substantial examination, to avoid its claim scope from being changed willfully by filing a post-grant amendment request and thus affecting a third party’s rights & interests, the permissible periods to file a post-grant amendment request for a utility model patent are modified and a post-grant amendment for a utility model patent is subject to a substantial examination rather than a formality examination.

• Article 74-3 applicable mutatis mutandis under Article 120;
• A request for technical evaluation report of the utility model patent is pending;
• A litigation involving the utility model patent is pending.

(Article 118 of the Patent Act)

With reference to the stipulation of the Hague Agreement, which provides that the term of a design patent is 15 years, the term of a design patent in Taiwan is extended from 12 years to 15 years so as to enhance protection for a design patent and to facilitate the development of design industries.

(Article 135 of the Patent Act)