News | IP Court

 

Grace Period Extended to 12 Months by New Amendment to Taiwan Patent Act

 

[Data Source: TIPO Official Website]

To safeguard the rights and interests of patentees and create an environment that facilitates innovation and utilization of technologies, a presidential decree was issued on January 18, 2017, publishing an amendment to several provisions of the Patent Act (Amendment). The Amendment includes the extension of the grace period for future invention and utility patents applications from 6 months to 12 months. The specific date of enforcement for the Amendment, however, is to be determined by Article 159.1 of the Patent Act which sets forth that: "[T]he effective date of the present Act shall be decided by the Executive Yuan." That is, the revised provisions will come into force only after the effective date be further announced by the Executive Yuan.

Before the Amendment, the grace period of loss of novelty and inventiveness exceptionally entitled to by an invention patent applicant is only 6 months upon the fact of disclosure, which, furthermore, is limited to a number of specific circumstances. However, in response to the situation where some Taiwan enterprises or academic institutes might disclose their inventions prior to filing an invention patent application for the purposes of commercial or academic activities, and to safeguard their inventions’ potential protectability by a patent immune from such disclosures, as well as to provide adequate time to prepare for filing a patent application, the current grace period of 6 months has been amended to 12 months. Together with the term of grace period, the Amendment also introduced the relax of the restriction limiting the applicability of grace period to only several cases of disclosure, so as to encourage the exposure and utilization of technologies. The Amendment (Article 22.3 of the amended Patent Act) was drafted in reference to provisions of Article 102(b) of 35 U.S.C., Article 30 of the Japanese Patent Act, Article 30 of the Korean Patent Act, etc.

Originally, a grace period is applicable to an invention patent only when one of a certain cases of disclosure is satisfied. According to the newly revised provision of Article 22.3, the restriction has been relaxed and now any facts of disclosure, either arising from the intention of the applicant itself or in the otherwise, will be applicable to the grace period clause, i.e., no limitation will be imposed as to how the invention is disclosed by the applicant. The procedural requirement that the grace period must be claimed at filing has been removed. Wherein, a disclosure arising from the applicant's own intention means that said disclosure was caused by the applicant's intention or act(s), more than those engaged with the applicant itself. As for a disclosure not arising from the applicant's own intention, it refers to a circumstance where the fact of disclosure occurs despite that it is against the applicant's will to disclose.

Besides, the policy of early publication of an application (18 months from filing or priority date) is to avoid duplicate R&D investment from others or to make the scope of claims of the patent known to the public. It is different from the goal of grace period which mainly meant to avoid an application’s exclusion from patentability due to the facts of disclosure prior to filing. In the big picture, they are different from each other in terms of both the regulated disclosing acts and the policy purpose. In view of such, the 4th paragraph is appended to Article 22 of the Patent Act which clearly sets forth that Paragraph 3 of the same Article does not apply to the circumstance where the disclosure on a Taiwan or foreign gazette in accordance with the law due to filing a patent application, because such publication arises from the intention of the applicant itself. Moreover, the cases of disclosure for filing a design patent application for an eligible design has also been relaxed in Article 122 of the same Act, while the grace period for a design remains as 6 months.

The revised provisions concerning grace period will be applicable only to patent applications filed after the concerned provisions come into force on May 1, 2017.

Article 22

An invention which is industrially exploitable and is in the absence of any of the following conditions may obtain a patent therefor upon application in accordance with this Act:

1. Which, prior to applying for patent, has been published;

2. Which, prior to applying for patent, has been publicly implemented; or

3. Which, prior to applying for patent, has become known to the public.

Notwithstanding the absence of the conditions set forth in the preceding Paragraph, if the proposed invention can be easily accomplished by a person having ordinarily knowledge in the art based on prior arts before the application for patent is filed, no invention patent shall be granted to such invention.

Where the application is filed within twelve (12) months after the occurrence of the applicant's disclosure, intentional or unintentional, said fact does not belong to the circumstance of any item in Paragraph 1 or the preceding Paragraph where an invention patent shall not be granted.

The preceding Paragraph does not apply to the circumstance where the disclosure on a Taiwan or foreign gazette, arising from the intention of the applicant itself, in accordance with the law due to filing a patent application.

Article 59

The effect of an invention patent right shall not be extended to any of the following matters:

1.  Acts done privately and for non-commercial purposes;

2.  Where the invention is necessarily put into practice for research or experimental purposes only;

3.  Where, prior to the filing for patent, the invention has been put into practice in this country, or where all necessary preparations have been completed for such purpose provided; However, this provision shall not apply where knowledge of the invention was obtained from the patent applicant within twelve (12) months prior to applying for patent and the patent applicant has made a statement concerning the reservation of his/her patent right therein;

4.  Where the article is simply a vehicle or a device thereof that passes the territory of this country;

5.  Where, in the case of revocation of the patent right acquired by a person other than the one entitled thereto as a result of an invalidation action filed by the real patentee, the licensee has, prior to the revocation of the patent involved, put the patent into practice in good faith or completed all necessary preparations therefor in this country;

6.  Where the patented articles manufactured by the patentee or under the consent of the patentee are put to use or resold after the sale thereof; The aforesaid manufacture and sale are not limited to those committed in this country; and

7.  Where, after an invention patent is terminated pursuant to Article 70.1(3) and before it is reinstated and published under Article 70.2 of this Act, acts done by a person who has been exploiting the invention in good faith or making all the necessary preparations to commit such acts.

The practicing entity referred to in Items 3, 5 and 7 of the preceding Paragraph shall confine his/her continued exploitation of the invention to his/her original scope of business only.

The licensee of the patent right which has been revoked as a result of an invalidation action as referred to in Item 5 of the first Paragraph under this Article shall pay the patentee a reasonable amount of royalty from the date of receiving a written notification from the patentee if the licensee continues to practice the patent after the revocation of the patent right.

Article 122

Any design that is industrially exploitable and is in the absence of any of the following conditions may be granted a design patent upon an application filed in accordance with this Act:

1. Which, prior to applying for patent, is preceded by an identical or similar design already published;

2. Which, prior to applying for patent, is preceded by an identical or similar design already publicly implemented; or

3. Which, prior to applying for patent, has become known to the public.

Notwithstanding the fact that a design is not under any of the conditions set forth in the preceding Paragraph, if it can easily be conceived by ordinarily skilled persons in the relevant art based on existing prior arts before the application for patent is filed, no design patent shall be granted to such design.

Where the application is filed within six (6) months after the occurrence of the applicant's disclosure, intentional or unintentional, said fact does not belong to the circumstance of any item in Paragraph 1 or the preceding Paragraph where a design patent shall not be granted.

The preceding Paragraph does not apply to the circumstance where the disclosure on a Taiwan or foreign gazette, arising from the intention of the applicant itself, in accordance with the law due to filing a patent application.

Article 142

The provisions of Article 36, Article 42, Paragraph One through Paragraph Three of Article 43, Paragraph Three of Article 44, Article 45, Paragraph Two of Article 46, Article 47, Article 48, Article 50, Paragraph One, Paragraph Two and Paragraph Four of Article 52, Paragraph Two of Article 58, Article 59, Article 62 through Article 65, Article 68, Article 70, Article 72, Paragraph One, Paragraph Three and Paragraph Four of Article 73, Article 74 through Article 78, Paragraph One of Article 79, Article 80 through Article 82, Article 84 through Article 86, Article 92 through Article 98, and Article 100 through Article 103 shall apply mutatis mutandis to design patents.

In case of design patent applications, the period specified in Paragraph One of Article 28 shall be six (6) months instead.

In case of design patent applications, the period specified in Paragraph Two and Paragraph Four of Article 29 shall be ten (10) months instead.

In case of design patent applications, the period specified in the proviso of Item Three, Paragraph One of Article 59 shall be six (6) months instead.

Article 157-1 

The provisions of Article 22, Article 59, Article 122 and Article 142 which were amended on December 30, 2016 shall be applicable only to the invention patent applications filed on or after such amendment comes into force.

 

for any questions relating to this topic, please contact us at cjchen@tsailee.com.tw 

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