Taiwan

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Taiwan established a specialised court (IP Court) to adjudicate IP-related cases on 1 July 2008. The IP Court has jurisdiction over the first and second instances of a civil action, the second instance of criminal cases and the first instance of administrative litigation cases.

As the Patent Act fully decriminalised all types of patent infringement in 2003, all legal proceedings in Taiwan for enforcing patents rights against infringers are civil actions, which are generally to be brought before the IP Court. However, the IP Court has only 'prioritised' rather than 'exclusive' jurisdiction - that is, in the event that a patent infringement case is brought to a common civil court, the civil court may decide to move the case to the IP Court; however, if the common civil court still renders the decision on its own, such decision may not be revoked on the ground of lacking jurisdiction.

The Patent Act does not provide administrative border control measures for the patentee to apply for detention of the infringing goods. Nevertheless, the customs officers bear the obligation to deter the pirated goods indicated in a preliminary or final injunction issued by a court.

 

What is the format of a patent infringement trial?

In the past, a patent infringement trial was handled by judges who normally lacked technical backgrounds. There was no discovery, no jury trial and no separate hearings (such as Markman hearings in the US) for claim construction. Different from the previous practice, where the judges in the common courts often relied heavily on the opinions of outside patent verification institutes to conclude whether infringement existed in a given case, in most cases now the IP Court reviews the technical issues (ie, validity issues and infringement issues) by itself with the support of the technical officers. Documentary evidence, factual witnesses (who may be cross-examined) and experts (who are generally appointed by courts) are all admissible in the proceedings.

To respond to the criticism that judges do not have sufficient technical understanding of the patent issues, the new IP Court is staffed by technical examiners with expertise in science and technologies. The technical examiners not only sort out the controversies of both parties to clarify the disputes but also provide reference opinions to the judges for technical issues.

Typically, a patent trial lasts one to two years at the first instance. While judges used to stay the civil litigation pending the parties' exhaustion of the administrative remedial procedures for related invalidation actions, the IP Adjudication Act specifically prohibits judges from staying the civil proceedings adjudicating infringement issues and requires them to make a determination on the defence of invalidity. Thus, the problem of long stays of the proceedings will be ameliorated.

 

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof for establishing the existence of infringement is borne by the patentee, while the burden to prove invalidity and unenforceability lies upon the alleged infringer. As commonly applied in any civil case, the party that bears the burden of proof needs to satisfy the burden by a preponderance of the evidence.

 

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The patentee has standing to sue for patent infringement. So does the exclusive licensee, unless the licence contract provides otherwise, according to articles 84.1 and 84.2 of the Patent Act. One Taiwan court precedent has denied a non-exclusive licensee's legal standing to sue because it only suffered indirect damages. A distributor probably does not have standing to sue, either, though there is no court precedent guiding on this issue.

An accused infringer may file a declaratory action under article 247 of the Civil Procedure Law if it can illustrate the existence of its legal interests to bring such a declaratory action (for example, reasonable apprehension on being sued for patent infringement) and there is no other civil remedy available.

 

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

There is no concept of contributory infringement or inducement of infringement similar to that applicable in the US. If the patentee intends to sue multiple infringers, he or she may do so under the joint tort theory where the aider and abettor are jointly and severally liable for the civil liability together with the primary infringer.

If each party only practises part of the element of a patent claim, there will be no patent infringement. However, under the joint tort theory, the court has found in one judgment that a party can only be jointly liable as an aider or abettor if there is a direct tortfeasor. This means that, without a party satisfying all the elements of a patent claim as the direct tortfeasor, there cannot be an aider or abettor of such patent infringement. Therefore, it would be hard, if not impossible, for multiple parties to be jointly liable if no party's action actually satisfies all elements of a patent infringement claim.

 

 

 

 

Yes, according to the Taiwan Civil Procedure Law, multiple parties can be joined as co-defendants if the rights or obligations of the claim are common to them; or if the rights or obligations of the claim arise from the same factual and legal grounds; or if the rights or obligations of the claim are of the same nature and arise from the same kind of factual and legal grounds, so long as the court has jurisdiction over all defendants.  As a result, all of the defendants do not have to be accused of infringing the same patents.  Nevertheless, it is very rare for a patentee to initiate a litigation against multiple parties who infringe different patents.

 

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

The Patent Act makes the manufacture, sale, offer for sale, use or importation for any of the foregoing purposes an infringement of a product patent, while the use, sale or importation of a product made through the direct use of a patented process constitutes infringement of a process patent. Generally, only behaviour taking place in Taiwan will constitute infringement of a Taiwan patent; however, the importation of infringing products manufactured outside Taiwan will constitute an infringement.

 

To what extent are 'equivalents' of the claimed subject matter liable for infringement?

The Guidelines for Patent Infringement Verification published by Taiwan's Intellectual Property Office (TIPO) stipulate that the doctrine of equivalents shall apply, after verification by literal infringement fails. If the claimed subject matter has the same functions, applies in the same ways and gets the same results as the literal reading of the claims, then the subject equivalents will be liable for infringement.

 

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Taiwan does not have discovery proceedings. Instead, the Civil Procedure Law allows a party to apply for an order requesting the other party to submit certain documents or evidence essential to resolution of the dispute. If the judge so orders and the party ordered to produce evidence fails to comply without proper justification, the judge may uphold the applicant party's assertion based upon the evidence. In addition, according to Intellectual Property Case Adjudication Act, the IP Court can enforce such order by force if the opposite party has no ground to refuse the submission of the requested evidence.

The other mechanism with direct compulsory effect for evidence collection is the preservation of evidence proceeding. A party may file an application, before or after a civil litigation is initiated, for preservation of evidence on the ground that the there is a risk that the relevant evidence might be concealed or destroyed. This is an ex parte proceeding and respondents will not become aware of the application until the judge arrives onsite for execution with the ruling to be served.

If the parties feel that it is necessary to collect evidence outside of Taiwan, then they must request the court to seek assistance from foreign authorities, Taiwan's diplomatic agencies or other institutions or organisations.

 

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Typically a patent trial lasts one to two years at the first instance, but varies with the complexity of the subject matter of the case. The appellate courts generally take a year to 18 months to complete proceedings at each instance.

 

 

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of a patent litigation infringement lawsuit mainly include:

•   court fees, which are calculated at approximately 1.1 per cent of the value of the claims at the first instance and 1.65 per cent of the same at the appellate levels;

•   bonds required for preliminary injunction, or civil litigation applicable only if the plaintiff has neither presence nor assets in Taiwan;

•   verification fees for court-appointed or party-retained institutes; and

•   attorneys' fees.

 

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

The decision of the first instance in a patent infringement lawsuit made by one judge at the IP Court can be appealed to a panel of three judges of the same court, and the appellate decision by this panel of judges can in turn, be appealed to the Supreme Court, provided that the value of the claim exceeds NT$1.5 million.

 

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition or a business-related tort?

Taiwan's Fair Trade Act prohibits enterprises from engaging in unfair competition, such as by abusing market power or by cooperation among horizontal competitors. Taiwan's Fair Trade Commission has published the Guidelines on the Review of Cases Involving Enterprises Issuing Warning Letters for Infringement of Copyright, Trademark and Patent Rights, and the Guidelines on Technology Licensing Arrangement. Patentees will expose themselves to civil liabilities or administrative sanctions or even criminal penalties if the enforcement of patent rights violates the Guidelines or the Fair Trade Act.

 

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Arbitration and mediation are both available to resolve patent disputes, but in practice parties rarely opt for alternative dispute resolution techniques.

 

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Yes, a patent can be obtained to cover software or business methods. However, the following subject matters are not patentable:

•   animals, plants, and essentially biological processes for production of animals or plants (except for the processes for producing micro-organisms);

•   diagnostic, therapeutic or surgical operation methods for the treatment of humans or animals; and

•   any invention that is contrary to public policy, morality or public health.

 

 

Who owns the patent on an invention made by a company employee, an independent contractor or multiple inventors? How is patent ownership officially recorded and transferred?

Unless the contract provides otherwise, a company owns the patent application right and patent right of its employees' inventions on works for hire, while the employee is entitled to ask for appropriate compensation and his or her name to be indicated as the inventor. The patent application right and patent right of an employee's invention other than that as a work for hire shall be vested in the employee provided that, if the invention is made through utilisation of the employer's resources or experience, the employer may, after having paid the employee a reasonable remuneration, put the same invention or utility model or design into practice in the enterprise concerned.

The patent application right and patent right for an invention made by an independent contractor shall be vested in accordance with the agreement. In the absence of such an agreement, the patent application right and patent right shall be vested in the independent contractor, provided, however, that the fund-provider shall be entitled to put such invention into practice.

Multiple inventors jointly own the patent application rights and must file the patent application jointly.

The ownership and the transfer of patent rights is published by the Patent Official Gazette and recorded in TIPO's database. Unless registered with TIPO, any transfer, trust or licensing or pledge of a patent cannot be asserted against a third party.

 

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?

The grounds on which a patent can be invalidated include:

•   unpatentability;

•   lack of novelty, inventive steps or utility;

•   failure of enablement; and

•   wrongful attribution of inventorship.

 

A patent can be invalidated (revoked) either by an invalidation action filed by any person to, or ex officio by, TIPO, the decision of which may be appealed to the Ministry of Economic Affairs (MOEA), then to a panel of three judges at the IP Court and finally to the Administrative Supreme Court. While the civil courts handling infringement cases shall review the validity of a defence on their own, such decisions on validity are binding only between the parties and do not affect TIPO's decision on the invalidation action. In other words, the procedure of the invalidation is still the ultimate mechanism to determine the validity of a patent.

 

Is there an 'absolute novelty' requirement for patentability, and if so, are there any exceptions?

Yes, there is an absolute novelty requirement for patentability. A prior art can be any information available to the public anywhere in the world. The Patent Act provides a six-month grace period if the invention is created as a result of research or experiment, has been exhibited at an exhibition sponsored or approved by the government or has been disclosed on an occasion not intended by the patent applicant.

 

What is the legal standard for determining whether a patent is 'obvious' or 'inventive' in view of the prior art?

An invention is obvious or lacks inventive step if it can be easily accomplished by a person having ordinary knowledge in the relevant technical fields based on prior art before the application for patent is filed.

 

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

Taiwan does not have the concept of inequitable conduct similar to that in the US that renders a patent unenforceable owing to an omission or wrongdoing by the inventors, particularly during the prosecution. However, a patentee's violation of the Fair Trade Act or relevant guidelines published by the Fair Trade Commission is often a successful defence against the enforcement of a valid patent.

 

 

21    Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

 

     Yes, the Patent Act provides that the right of a patent does not extend to the situation, where prior to filing for patent, the invention has been used in this country, or where all necessary preparations have been completed for such purpose, except when the knowledge of the manufacturing process was obtained from the patent applicant within six (6) months prior to applying for patent and the patent applicant has made a statement concerning the reservation of his/her patent right therein.  This defence covers all types of inventions and is limited to commercial uses.  Furthermore, it is also a defence if the accused infringer put the invention into practice for research, educational or experimental purposes only, with no profit-seeking acts involved.  This later defence can be used whether the activity takes place before or after the application of the patent. 

 

 

 

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature?

     The Patent Act stipulates two alternative ways to calculate damages resulting from a patent infringement: first, actual damages plus lost benefits of the patentee. In the absence of proof to show the amount, a patentee may subtract the profit earned through the practice of the patent after the existence of infringement from the profit normally expected through the practice of the same patent and take the balance as the amount of the damages; or second, the profit of the infringer gained from the infringement. If the infringer cannot prove its costs or necessary expenses, the total income from selling the infringing products shall be deemed as the profit. Further, in cases where the infringement downgrades the business reputation of the patentee, the patentee can claim additional damages. Damages start to accrue when the infringement activity takes place. The damage awards may increase to be punitive if the infringement is found to be wilful (see question 26).

 

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer's suppliers or customers?

     A patentee may obtain a final injunction, which is a remedy at law, against future infringement if the judgment finding infringement becomes irrevocably final. Patentees can file a preliminary injunction, before or after a civil litigation is filed, if they can satisfy the following legal requirements: a disputed legal relationship determinable by followed-up civil litigation; potential irreparable harm or urgency unless the preliminary injunction is granted; and a bond sufficient to compensate the respondent if the claim is later proved to be without merit. The new IP Adjudication Act specifically requires that the judge takes into account the 'likelihood of success on the merits', including on the issues of infringement and invalidity, and to consider and balance the applicant's irreparable harm or urgency against the respondent's burden or hardship and the public interest. Thus, it has lately become more difficult to obtain a preliminary injunction.

The injunction is effective only against the respondents of the ruling or execution orders. If the patentee wants to have the effectiveness directly against the infringer's suppliers or customers, it must include them as respondents in the application, or at the very least as respondents for execution orders.

 

 

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?

     There is no specific tribunal or proceeding for border protection such as the US's ITC system. However, in a patent infringement case, where the goods in question are suspended from import or export on the ground of a provisional measure (ie, preliminary injunction) adjudicated by the judicial authority (ie, IP court), the customs authority will implement necessary measures after the patent owner (or exclusive licensee) provides the time of import or export of the goods in question, the location, the name of carrier for import or export, and flight number or number or declaration form number, unless the goods in question have already been released by the customs authorities.

 

Under what conditions can a successful litigant recover costs and attorneys' fees?

     Attorneys' fees are recoverable only when the laws require the parties to be represented by attorneys-at-law for litigation. The parties are not legally required to be represented by attorneys for the first and second instances of a civil litigation, thus attorneys' fees are not recoverable. Attorneys' fees for an appeal to the Supreme Court are recoverable to the extent permitted under the Civil Procedure Law because the parties are legally required to be represented by attorneys-at-law there.

 

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate?

     If the infringement is found to be deliberate or wilful, the court may grant monetary compensation in an amount higher than the amount of damages estimated but no more than three times the amount of the damages. Any indication that the infringer has actual knowledge of the existence of the patent can be construed as deliberate or wilful infringement. For example, judges concluded wilful infringement in the following cases where:

•   the infringer used to have a licence agreement with the patentee but failed to pay the royalty and this intentionally resulted in termination of the licence, and the infringer filed several actions to TIPO to invalidate the patent in dispute; or

•   the infringer used to purchase the patented products frequently from the exclusive licensee.

 

What is the time limit for seeking a remedy for patent infringement?

     The right to claim patent infringement is extinguished if not exercised within two years from the time the patentee is aware of the infringement and the identity of the infringers, or within 10 years from the time of the occurrence of the infringement.

 

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

     Yes, the patentee must mark the serial number of the patent certificate on its patented article or the packaging thereof, and it may require that its licensee or the grantee of a compulsory licence do the same.

 

In the case of a failure to affix such marking, no claim for monetary damages will be allowed, except in the case that the infringer has known or should have known, as proved by facts, of the existence of the patent.

False patent marking may constitute a violation of the Fair Trade Act and may also lead to criminal penalties and civil liabilities. The Fair Trade Commission has rendered several judgments relating to false patent marking and ruled that such act is a violation of the Fair Trade Act, which may result in a prohibition of the act and an administrative fine. Moreover, under certain circumstances, false patent marking may also violate the provisions of the Criminal Code and lead to criminal liabilities such as imprisonment and criminal fines. In such event, as the false patent marking would also constitute a tort, the injured party might also sue for compensation in a civil proceeding.

 

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

     A licence or transfer of a patent will be void if the agreement will give rise to unfair competition because it prohibits or restricts the assignee from using any specific article or process not furnished by the assignor or licensor, or requires that the assignee purchase products or raw materials of the assignor that are not under patent protection. In addition, the patentee must comply with the Fair Trade Act and relevant guidelines for licensing the patents.

 

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

     A compulsory licence is available to deal with national emergencies or to make non-profit seeking use of a patent for enhancement of the public welfare or, in the case of an applicant's failure to reach a licensing agreement with the patentee concerned under reasonable commercial terms and conditions within a considerable period of time, TIPO may, upon application, grant a right of compulsory licensing to the applicant to put the patented invention into practice provided that such practising shall be restricted mainly to the purpose of satisfying the requirements of the domestic market. However, if the application for compulsory licensing of a patent right covers semiconductor technology, such application may be allowed only if the proposed practise is purposed for a non-profit seeking use contemplated to enhance the public welfare. In addition, TIPO may also, upon application, grant to the applicant a compulsory licence to practise the patented invention in the event that the patentee has imposed restrictions on competition or has committed unfair competition, as confirmed by a judgment given by a court or a decision by the Fair Trade Commission.

The grantee of the compulsory licence shall pay to the patentee appropriate compensation. In the case of dispute over the amount of such compensation, the amount shall be decided by TIPO.

 

How long does it typically take, and how much does it typically cost, to obtain a patent?

     An invention patent typically takes about two years to be granted, if no official action is necessary. Typically, official fees from the filing of an application to the receipt of the patent certificate, where no additional official actions were encountered, would start at the basic fee of NT$15,000 (including the filing fee and examination fee), and the attorneys' fees for processing the prosecution vary. However, the examination fee has been adjusted as of 1 January 2010 and will apply to patent applications filed on and after 1 January 2010. The annuity fee has also been adjusted and will apply to all applications. The new examination fee is calculated based on the number of claims, instead of a fixed flat fee. The basic fee will be NT$7,000 (NT$1,000 less than the previous fee), but TIPO will charge an additional fee if more than 10 claims are made (NT$800 for each further claim). The annual fee to maintain an invention patent is NT$2,500 for the first three years and this amount gradually increases over the years.

 

 

 

32     Expedited patent prosecution

Are there any procedures to expedite patent prosecution (eg, programmes such as the Patent Prosecution Highway, payment of extra fees)?

 

     Yes, there are two procedures to expedite patent prosecution.  The first one is the Accelerated Examination Program.  Under the following three conditions, the applicant can apply for such procedure: (1) the application's foreign counterpart has been granted under substantive examination by a foreign patent authority; (2) the EPO, JPO or USPTO has issued an OA during substantive examination but yet to allow application's foreign counterpart; (3) the invention application is essential to commercial exploitation.  If the application of such procedure is under condition 3, then a fee of NT$4,000 will be charged.  Starting from Sep. 1, 2011, there is another pilot program of expedite patent prosecution procedure called Patent Prosecution Highway between TIPO and USPTO.  This program will enable an applicant, whose claims are determined to be allowable/patentable in the Office of First Filing (OFF), to have the corresponding application filed in the Office of Second Filing (OSF) advanced out of turn for examination while at the same time allowing the OSF to exploit the search and examination results of the OFF.

 

 

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

     According to article 26 of the Patent Act, the specification of an invention patent application shall contain the title of invention, description of invention, abstract of invention and scope of claims. In addition, the manner in which the description, claims and drawings of an invention are to be disclosed are prescribed in detail in the Enforcement Rules of the Patent Act. The Taiwan Intellectual Property Office (TIPO) has also issued the Substantive Examination Guidelines (Guidelines) according to which the TIPO reviews the applications received and decides whether a patent application should be granted. The Guidelines set forth were drafted based on the practices of the patent offices of the US, Japan and Europe so their content is quite similar to the international patent prosecution practice. In short, the requirements of utility, novelty and inventiveness play important roles when TIPO reviews the applications. What's more, according to the Patent Act , the law clearly stipulates that the claims shall be supported by the specification and drawings. If the claims contain features that are not disclosed in the specification or drawings, the application will not be allowed.

 

Must an inventor disclose prior art to the patent office examiner?

     The Enforcement Rules of the Patent Act require an applicant to disclose prior art known to the applicant. According to TIPO, however, failure to disclose would not necessarily affect the validity of the patent as long as it does not cause persons skilled in the art to be unable to understand the content of and how to practise the invention.

 

 

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

     A patent applicant may supplement or amend the claims of an earlier filed application within 15 months from the filing date, provided that the contents of the supplement or amendment do not exceed the scope of the specification or drawings disclosed in the original patent application.

If the supplement or amendment exceeds the scope of the specification or drawings, then the patent applicant must file a further application based on a prior application filed in Taiwan on which it can claim priority in respect of the invention described in the specification or drawings submitted along with its prior patent application, except in the following circumstances:

•   where a period of 12 months has elapsed from the filing date of the prior patent application;

•   where a claim for priority right upon a foreign application has been made in respect of the invention described in the prior patent application;

•   where the prior patent application has been divided into divisional applications or has been converted; or

•   where the examination decision has been made with respect to the prior patent application.

 

Is it possible to appeal an adverse decision by the patent office in a court of law?

     An applicant for an invention patent or a design patent may apply for re-examination against the rejection decision within 60 days from the date TIPO's decision is served. Unless the application is rejected on procedural grounds or on the ground of the ineligibility of the applicant, the re-examination proceeding is the prerequisite for the later appeal to MOEA, the panel of three judges of the IP Court and then the Administrative Supreme Court.

Since 2004, the said re-examination proceeding no longer applies to the case of utility model patents as a utility model patent now merely requires a formality examination by TIPO rather than the substantive examination. Thus, an applicant for a utility model patent may directly appeal against the adverse decision to the MOEA within one month from the date TIPO's decision is served. The MOEA's decisions may be further appealed to a panel of three judges of the IP Court and finally to the Administrative Supreme Court.

 

 

Does the patent office provide any mechanism for opposing the grant of a patent?

     No, the Patent Act has abolished the opposition procedure that previously allowed third parties to oppose a grant within three months after the application was published. Now, the only mechanism to protest a patent is to file an invalidation action after the patent is granted.

 

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

     Taiwan uses a first to file system, pursuant to the Patent Act. Therefore, when multiple applications are filed for the same invention, TIPO will only grant a patent to the first to file an application.

 

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

     The Patent Act allows patentees to file an application for making amendments to the contents of the specification and drawings only in respect of the following matters: narrowing the scope of the claims, correction of errors made in the specification or explanation of obscure descriptions. Any amendment to be made cannot exceed the scope of content disclosed in the original specification or

drawings when the patent application was filed, and cannot substantially expand or alter the scope of the patent claims. Upon approval of the amendments, TIPO will publish the cause of such amendments in the Patent Official Gazette. The effect of the amendments to the specification or drawings shall, upon publication, be retroactive to the filing date of the patent application concerned.

A patent can be invalidated (revoked) either by an invalidation action filed by any party to, or ex officio by, TIPO (see question 17).

There is no re-examination proceeding in the sense that any person at any time may challenge the patentability of a patent on the basis of prior arts. Rather, the re-examination under the Patent Act is the prerequisite for an applicant applying for an invention patent or a design patent to go through the administrative remedial procedure (see question 36).

The court may not amend the patented claims during a lawsuit.

 

How is the duration of patent protection determined?

     The term of an invention patent is 20 years from the filing date of the patent application. In the event of invention patents covering pharmaceuticals, agrichemicals or processes for preparing the same, a patentee may apply for an extension of the patent term for two to five years if, pursuant to other acts or regulations, prior government approval must be secured to practice such patents, for which the processing exceeds two years after the publication of the patents. The term of a utility model patent is 10 years from the filing date while that of a design patent is 12 years from the filing date.

 

 

 

UPDATE & TRENDS

What are the most significant developing or emerging trends in the country's patent law?

 

The Patent Act in Taiwan has undergone a major revision at the end of the year 2011.  The main changes include:
(1) a patent applicant may claim a grace period for disclosing his/her invention in any kind of printed; publication by himself/herself within 6 months before the filing date ;
(2) the ��reinstatement of rights�� mechanism is introduced ;
(3) the time limit for applicants wishing to amend applications is deleted ;
(4) the requirements for applying for compulsory licenses are amended ;
(5) a compulsory license may be granted to produce pharmaceutical products for export to developing or less-developed countries to assist with public health emergencies ;
(6) the patent invalidation system is revised ;
(7) it is now necessary to show an infringer's intentional or negligent act for a patentee to successfully claim damages for patent infringement ;
(8) an applicant is now permitted to file an invention patent application and a utility model patent application for the same creation on the same date;
(9) partial designs, computer-generated icons and graphical user interfaces (icons & GUIs), and sets of articles into the scope of design patent protection are allowed; derivative designs systems are introduced.

The new Patent Act has been approved by Taiwan's Legislative Yuan and the President, but the Administrative Yuan will decide and announce the date on which this Act will become effective.  The revisions are expected to become effective by the end of 2012.  

 

 

 

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