Taiwan Focus: Amended Patent Act brings key changes

|

Applications with foreign-language specifications

Under the previous Act, a patent applicant can initially file a patent application with a foreign-language patent specification and claim to obtain a filing date, as long as the applicant submits a Chinese-language patent specification and claim within the specified deadline. However, if the content of the Chinese-language patent specification and claim later supplemented are different from the originally filed foreign-language application, the filing would be delayed to the date of when the Chinese-language patent specification and claim were submitted. If there is any mistranslation in the Chinese-language patent specification and claim, the patent applicant may apply for an amendment when the application is still pending. In addition, a correction after the application has been granted, in accordance with the Patent Act, and any such amendment or correction shall not cause substantive change, such as introducing new matter, to the original disclosure as compared with the supplemental Chinese-language patent specification and claim. The amendment or correction procedure does not really clarify the issues with translation errors.

The amendment of a foreign-language patent specification and claim is no longer allowed. There will be a notable new procedure for amending or correcting translation errors, but for amendments or corrections of translation errors, they cannot go beyond the disclosure scope of the specification, claims and drawings of the Chinese-language version submitted at the time of patent filing. An amendment or correction of translation errors beyond the initial disclosure scope of the foreign-language specification, claims and drawings originally submitted, is prohibited.

|

Utility model patent

A noteworthy amendment for utility model and invention is the allowance that the same applicant can file an invention patent and a utility model patent application for the same creation on the same date. After the Patent Authority determines the invention patent is acceptable, the applicant has the right to select one patent within a specified time limit. If the invention patent application is selected, the utility model patent shall be deemed non-existent ab initio, upon the applicant's indication of their decision to retain the invention patent. Moreover, for the situations where the utility model patent right has automatically extinguished or been invalidated before the invention patent application is granted, the examination of the invention patent application will be discontinued and no patent will be issued. The amendment further specifies the correction of a utility model application, if manifestly exceeds the scope of claim disclosed in the original specification, claim or drawings initially filed, no patent will be granted.

|

Design patents

In order to make design patents in Taiwan more compatible internationally, the amended Act puts in place three new patentable subject matters. Design patent protection is also expanded to partial designs, computer-generated icons, designs and graphical user interface (GUI) designs. As the derived design regime is introduced, the associated design patent regime will be abolished. Under the amended Act, the applicant who has filed applications seeking a patent for similar designs, each must designate one from among them as the original design with the others as derived designs. As the patent right in one derived design is independent from that of another, all of the derived patent's rights will be equally protected. They may also be enforced separately with each derived patent retaining a scope of similarity. However, a derivative design patent shall expire simultaneously when the original design patent expires.

For situations where two or more articles belong to the same class under the International Industrial Design Classification and such articles are sold together or used as a set, one design patent application can be filed to cover all the designs applying to the article. However, for patent rights enforcement, neither the design patent nor the articles which are considered as whole for patentable subject matter may be separated or divided.

|

Invalidation actions

The amended Act includes some noteworthy changes to invalidation procedures as well. Since the validity of a patent is a private dispute, which the patent authority should leave to the invalidation petitioner and the patentee, ex officio invalidation by the Patent Authority is abolished. However, the Act still empowers the Patent Authority to review the invalidation action, especially when they discover reasons and evidence supporting the revocation. In this instance, the Patent Authority may, ex officio, review the reasons and evidence which are raised within the scope of the invalidation statement, but not submitted by the invalidation petitioner. When more than one request for invalidation has been lodged for the same patent, the Authority may combine the requests for examining and decision making purposes.

When filing an invalidation action, the petitioner must submit an “invalidation statement.” Once filed, the statement should not be altered or any items added, but it can be narrowed, so the demands of the request must clearly identify the target claims of the challenged patent. The Patent Authority shall examine an invalidation action without further notice if the supplement of reasons or evidence by the invalidation petitioner is probably going to delay the examination or if the fact and evidence submitted are sufficiently clear.

According to the amended Act, for the situation that a patent covers two or more claims, a petition for an invalidation action can be filed against a part of the claims of the said patent. In other words, it is possible to challenge a portion of the claims in a patent and the Patent Authority may separately invalidate the challenged claim. Partially challenged claims may stand in part and be denied in part based on a claim-by-claim examination of the grounds for the invalidation action. The Patent Authority will also reason its decision for invalidations on a claim-by-claim basis.

Regarding to the res judicata in invalidation procedures, in addition to the case that where another invalidation petition filed based on the same fact and the same evidence has been dismissed through examination, any person shall not be allowed to file a separate invalidation petition against the same patent based by virtue of the same fact and the same evidence. The Amended Act further states that where new evidence is submitted with the Intellectual Property Office, pursuant to Article 33 of the Intellectual Property Case Adjudication Law, and such new evidence is considered groundless upon examination of the Court.

|

Infringement and damages

The amended Act specifically sets forth that the damages for patent infringement, where the infringer's subjective intent or infringement out of negligence, shall be a conditional requirement. While for the remedy of removal of infringement, prevention of anticipated infringement threat or possibility for infringement shall be irrelevant whether subjective elements of a patent infringement act are involved or not.

In the previous Patent Act, in cases of intentional infringement, the patentee may claim “a maximum triple damage award for wilful infringement.” This provision saw much criticism from legal scholars, because generally Taiwan does not allow punitive damage awards in private actions, limiting recovery to compensatory damages. The amended Act repeals triple damages for wilful infringement, complying with the legal principle that “civil compensation is aimed to make up the damage actually suffered.” The provision that “the patentee may claim separately for damages at a reasonable amount in cases where the business reputation of the patentee has been downgraded or injured as a result of the infringement” is also removed.

The Act includes a new option to calculate damages through “royalty payment amounts receivable in cases of patent licensing.” In other words, the patentee may choose to calculate the damages based on the amount of royalties usually collected by licensing the patent.

Taiwan has made impressive legislative strides and developed a solid apparatus for the protection of patent rights in the amended Act. This is despite animals, plants and essential biological processes for the production of animals or plants still not being patentable. From preliminary issues to patent applications and enforcement of patent rights, the Act and corresponding regulations will change many aspects of patent administration in Taiwan.

There is no doubt these changes will improve patent protection and prosecution efficiency, bringing them in line with international practices. These efforts will pay off in the near future and are welcomed by patent applicants.

Cliff Wong

Attorney-at-law/Patent Attorney

Chen & Lin

Mr. Cliff (S.H.) Wong is a senior attorney in the Taipei Office of Chen & Lin Attorneys-at-Law. Before practicing law, he worked at Macronix Int'l (a semiconductor company, based in Hsinchu) as a R&D and IP Project Manager for several years. Prior to joining Chen & Lin Attorneys-at-law, he was an associate at Baker & McKenzie's Taipei office. Cliff has assisted his domestic and foreign clients in many patent infringement litigations. He has also drafted specifications and patent applications in Taiwan, China and the US. In 2009, as China opened the door to Taiwanese to take the bar examination, he passed the National Judicial Examination of the PRC. For the time being, Cliff is the only practicing Taiwanese patent attorney, who has passed the bar examination in both Taiwan and China.

Cliff graduated from National Taiwan University (B.S. in Physics, M.S. in Electrical Engineering) and Law School of Soochow University (LL.M). He was a PhD student at Tokyo University, under a scholarship sponsored by Matsushita (Panasonic). Currently, he is a Ph.D. Candidate at the Graduate Institute of Electronic Engineering, National Taiwan University.