Ministry of Economic Affairs,R.O.C.

What's New
2019-10-31 14:45
Intellectual Property Office, Ministry of Economic Affairs
Amended Patent Act will enter into force on November 1, 2019
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The amendments to the Patent Act promulgated on May 1, 2019 will come into force on November 1, 2019. The main points of the amended act include: the term of protection of a design patent will extend to 15 years from 12 years; an applicant may file a request for division of patent application within three months upon receiving the approval decision of an examination or reexamination, and such a rule also applies to utility model patent applications; a request of invalidation should provide invalidation reasons or evidence within three months and no reviews will be made beyond this time period (also, there are time limits for patentees to file post-grant amendment requests during invalidation proceedings); there is a new time period allowed for utility model patentees to file post-grant amendment requests, and post-grant amendments to utility model patent will have to go through substantive examination rather than formality examination.

Transitional provisions for the implementations of the amendments are as follows, please be aware of the differences:

1. Extension of the period of design patent protection
  (1) The term of protection of a design patent will still be 12 years if a design expires on the date of implementation of the amendments.
  (2) The term of protection of a design patent will automatically extend to 15 years if its right is valid on the date of implementation of the amendments.

2. Division of a patent application after the approval decision is served
  (1) If an approval decision of an invention or a utility model patent application examination, reexamination served within three months prior to the implementation date of amended Patent Act the applicant may file a request for division of the approved patent application within three months after the date on which an approval decision is served.
  (2) If an approval decision of an invention or a utility model patent application examination reexamination served three months the date of the implementation of the amended act, the applicant may not file a request for division of the approved patent application.

3. Providing invalidation reasons or evidence for an invalidation action
  The invalidation requests, which have been accepted before the amendments enter into force but no decisions have been rendered, will be handled as follows:
  (1) All reasons and evidence provided by the requester before the amendments enter into force will be examined.
  (2) All reasons and evidence provided by the requester within three months after a request is filed will also be examined.
  (3) Reasons and evidence provided by the requester beyond three months after a request is filed will not be examined.

4. Filing post-grant amendment requests during invalidation proceedings
  During invalidation proceedings, the post-grant amendment requests for invention, utility model or design patents, if filed after the amended Patent Act comes into force, will be bound by the time limit as mentioned in the amended act. However, the requests will not be bound if the patents are involved in pending litigation cases.

5. Post-grant amendments requests
  (1) The post-grant amendment requests for invention and design patents that are not proposed during invalidation proceedings will not be bound by any time limit after the amended Patent Act come into force.
  (2) The post-grant amendment requests for utility model patents, which have been accepted prior to the date of implementation of the amended Patent Act, will be substantively examined after the act comes into force. But no fees should be paid.
  (3) The post-grant amendment requests for utility model patents, which are only filed after the day of implementation of the amended Patent Act, will be bound by the time limit as mentioned in the amended act, and a NT$2000 fee should be paid.