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Patent Act Article 1-50 (2013.1.1 Effective)
Patent Act Article 101-159 (2013.1.1 Effective)
Article 51 Confidentiality of invention involving national security
Where, through examination, an invention involves national defense secrets or any other secrets pertaining to national security, the Ministry of National Defense or relevant national security authorities shall be consulted for their comments; if it is deemed necessary to keep such invention confidential, the application documents of the said patent application shall be sealed.
If a request for substantive examination has been filed for the said patent application, an examination decision shall be rendered and served to the applicant and the inventor.
The applicant, his/her patent agent and the inventor shall keep the invention confidential as described in the preceding paragraph; the right to apply for a patent for such invention shall be deemed having been abandoned if there is any violation of the confidentiality requirement.
The confidentiality period shall last for one year from the date on which the decision is served on the applicant, and such period may be extended on an annual basis. One month prior to the expiry of the confidentiality limit, the Specific Patent Agency shall consult with the Ministry of National Defense or relevant national security authorities and, if confidentiality is no longer required, such patent application shall be laid open.
Where an invention prescribed in Paragraph 1 is approved and if confidentiality is deemed unnecessary for such patent application, the Specific Patent Agency shall notify the applicant to pay the patent certificate fee and the first year patent annuity within three months, and shall publish the grant of the invention patent after receiving such fees. If the said fees are not paid prior to the time limit stated above, no publication shall be made.
The Government shall pay a considerable compensation sustained by the applicant during the confidentiality period.
Section 4: Patent Rights
Article 52 Payment of fees and publication
For an invention patent application that is approved, the grant of such patent application shall be published only when the patent certificate fee and the first year patent annuity are paid by the applicant within three months from the date of receiving the allowance decision; if the fees are not paid before the expiration of time limit stated above, no patent grant publication shall be made.
Patent rights granted to an invention patent application shall start from the date of patent grant publication, and a patent certificate shall be issued thereto.
The term of an invention patent shall expire after a period of twenty years from the filing date of the application.
Where applicant unintentionally failed to pay the required fees within the time limit set forth in Paragraph 1 of this Article or Paragraph 4 of the preceding Article, the applicant may pay the patent certificate fee and two times the patent annuities of the first year within six months after the time limit expired, in which case the patent grant shall be published by the Specific Patent Agency.
Article 53 Extension of patent term
For an invention patent directed to a pharmaceutical or agrichemical(s), or the manufacturing process thereof, of which the exploit needs to obtain a regulatory approval pursuant to other acts or regulations, if the regulatory approval is obtained after the publication of the concerned invention patent, the patentee may apply for one and only one extension of the patent term of said invention patent based on the first regulatory approval. Said regulatory approval is only allowed to be used once for seeking patent term extension.
The extension of the patent term approved under the preceding paragraph shall not exceed the length of time when the patent cannot be exploited because of absence of the regulatory approval concerned from the central government authorities in charge of the business. If the time needed to obtain said regulatory approval exceeds five years, the granted patent term extension shall be five years.
The term "pharmaceutical" set forth in Paragraph 1 does not include any veterinary drug.
When applying for patent term extension under the first paragraph, a written request and evidentiary documents must be submitted to the Specific Patent Agency within three months after obtaining the first regulatory approval; no request for patent term extension shall be filed within six months prior to the end of the original patent term.
When making a decision on an application for patent term extension, the Specific Patent Agency shall take into consideration the impact on public health and shall coordinate with the central competent authority in charge to enact the regulations concerned.
Article 54 Deemed as extended
Where a request for patent term extension is filed under the preceding Article, the patent term shall be deemed having been extended if the Specific Patent Agency has not issued a decision before the original patent term expires. However, where such request for patent term extension is not allowed, the patent term shall expire at the original expiration date.
Article 55 Assignment of examiner for extension application
The Specific Patent Agency shall assign an examiner to examine a request for patent term extension, issue a written decision and serve it on the patentee.
Article 56 Scope of patent term extension
The scope of a patent, of which a term extension has been granted, is limited to the active ingredients and use stated in the regulatory approval concerned.
Article 57 Invalidation of patent term extension
Any person may request for invalidation of the granted patent term extension to the Specific Patent Agency, together with evidentiary documents, under any of the following circumstances:
1. where it is unnecessary to obtain the regulatory approval to exploit the invention patent concerned;
2. where neither the patentee nor his/her licensee has obtained the regulatory approval;
3. where the granted term of extension exceeds the period during which the patent cannot be exploited;
4. where the applicant of the patent term extension is not the patentee;
5. where the regulatory approval of extension request is not the first approval, or an extension based on the said regulatory approval concerned has been done;
6. where the request for extension is based on the time spent in conducting trials or tests in a foreign country, the extended term granted by the Specific Patent Agency exceeds the period recognized by the foreign patent authority;
7. where the pharmaceuticals involved in the granted patent term extension are veterinary drugs.
If invalidation of the patent term extension is irrevocably sustained, the granted patent term extension shall be deemed non-existent ab initio. However, if such invalidation is irrevocably sustained on the ground listed in Subparagraph 3 or Subparagraph 6 of the preceding paragraph, only the exceeding period of the extension shall be deemed non-existent.
Article 58 Effects of invention patent right
Unless otherwise provided for in this Act, the patentee of an invention patent has an exclusive right to prevent others from exploiting the invention without the patentee’s consent.
Where the invention is a product, exploiting of which means the acts of making, offering for sale, selling, using, or importing that product for the aforementioned purposes.
Where the invention is a process, exploiting of which means the following acts:
1. using the process;
2. using, offering for sale, selling or importing for these purposes the product obtained directly by that process.
The extent of the protection conferred by an invention patent shall be determined by the claim(s), and the description and drawing(s) may be considered when interpreting the claim(s).
The abstract shall not be used for the purpose of interpreting claim(s).
Article 59 Limitations of patent right
The effects of an invention patent right shall not extend to the following circumstances:
1. acts done privately and for non-commercial purpose(s);
2. necessary acts to exploit the invention for research or experimental purpose(s);
3. acts done by a person who has been exploiting the invention or making all the necessary preparations for doing such act in this country before the filing date of the invention. However, this provision shall not apply where a person learning of the invention from the applicant for patent within six months and the applicant has made a statement reserving his right in the event of a patent being granted;
4. a vehicle merely passing through the territory of this country, or any device of such vehicle;
5. where a patent granted to a person not entitled to apply for a patent is revoked as a result of an invalidation filed by the patentee, acts done by a licensee who has, prior to patent invalidation, been exploiting the invention in good faith or making all the necessary preparations to do such an act ;
6. where, after the sale of a patented product made by the patentee or made under consent of the patentee, using or reselling such product. The making and selling as stated above are not limited to acts done domestically;
7. where, after an invention patent is ceased pursuant to Subparagraph 3, Paragraph 1 of Article 70 and before it is reinstated and published under Paragraph 2 of Article 70 of this Act, acts done by a person who has been exploiting the invention in good faith or making all the necessary preparations to do such an act.
The person exploiting the invention as stated in Subparagraphs 3, 5, and 7 of the preceding paragraph, may continue to exploit the invention within the original business purpose.
A licensee as stated in Subparagraph 5 of Paragraph 1, who continues to exploit the invention after the patent is revoked, shall pay the patentee a reasonable royalty as of the date of receiving a written notice from the patentee.
Article 60 Limitations of patent right: research and trials of pharmaceuticals
The effects of the patent right shall not extend to research and trials, including their practical requirements, necessary for obtaining registration and market approval of drugs under the Pharmaceutical Affairs Act or obtaining market approval of pharmaceuticals from a foreign country.
Article 61 Limitations of patent right: dispensation of medicines
The effects of the patent right for the invention of medicines to be manufactured by mixing two or more medicines or for the invention of a process thereof, shall not be affected against the preparing medicines in accordance with a prescription from a physician, or the medicines so prepared.
Article 62 Recordation to have Locus standi against a third party: transference of patent right
The assigning, entrusting, licensing, or establishing of a pledge on a patent right by the patentee shall have no locus standi against any third party unless it is recorded with the Specific Patent Agency.
The license as stated in the preceding paragraph may be an exclusive license or a non-exclusive license.
An exclusive licensee shall, within the scope of the license granted, exclude the patentee and third parties from exploiting the patented invention.
Where a patentee establishes multiple pledges on his/her patent for the purpose of securing multiple creditors’ rights, the ranks of these pledges shall be determined according to the order of their recordation.
Article 63 Sub-license
An exclusive licensee may sub-license a third party to exploit the licensed patent unless otherwise agreed upon by contract.
A non-exclusive licensee shall not be allowed to sub-license a third party to exploit the licensed patent without the consent of the invention patentee or the exclusive licensee.
The sub-license contract shall have no locus standi against any party unless it is recorded with the Specific Patent Agency.
Article 64 Disposal of jointly-owned patent right
Where a patent right is jointly owned, except for exploitation by each of the joint owners, it shall not be assigned, entrusted, licensed, pledged, or abandoned without the consent of all the joint owners.
Article 65 Disposal of one’s own share of jointly-owned patent right
Where a patent right is jointly owned, no joint owner may assign, entrust or establish a pledge on his/her own share without the consent of all other joint owners.
Where a joint owner of a patent right has abandoned his/her own share, this share shall be vested in other joint owner(s).
Article 66 Prolongation of patent term
Where the patentee has suffered loss as a result of a war between the ROC and a foreign country, he/she may apply for patent term prolongation of his/her patent for five to ten years; only one such prolongation shall be permitted. However, if the patent is owned by a national from the foreign country in war with the ROC, an application for patent term prolongation shall not be allowed.
Article 67 Amendment of granted patent
When applying for amending the description, claim(s) or drawings of an invention patent, the patentee shall only conduct the amendment as follows:
1. to delete claim(s);
2. to restrict the scope of claim(s);
3. to correct errors or incorrect translations;
4. to clarify ambiguous statement.
Except for correction of incorrect translations, an amendment shall not extend beyond the scope of content of the description, claim(s), or drawing(s) as filed.
For an invention patent application filed by submitting the description, claim(s), and drawings prepared in a foreign language pursuant to Paragraph 3 of Article 25, a correction of incorrect translations shall not extend beyond the scope of disclosure in the foreign language documents as filed.
An amendment shall not substantially enlarge or alter the scope of the claim(s) as published.
Article 68 Examination of amendment
The Specific Patent Agency shall designate patent examiner(s) to conduct examination of patent amendment, render a decision and serve it to the patentee, except for an amendment filed in accordance with the provisions set forth in Article 79.
After approving the amendment, the Specific Patent Agency shall publish the result therefor.
Once a description, claim(s) and drawing(s) is amended and published, such amendment shall take effect retroactively from the filing date.
Article 69 Restriction of abandonment or amendment of patent right
A patentee shall not abandon his/her patent right, or apply for an amendment as stated in Subparagraph 1 or Subparagraph 2, Paragraph 1 of Article 67 without the consent of the licensee or pledgee .
Where a patent right is jointly owned, no joint owner may apply for amendment as stated in Subparagraph 1 or 2, Paragraph 1 of Article 67 without the consent from all the joint owners.
Article 70 Extinguishment of patent right
An invention patent right shall become extinguished under any of the following circumstances:
1. where the patent term has expired, and the patent shall become extinguished;
2. where the patentee has passed away without heirs;
3. where the second year annuity or any subsequent patent annuity is not paid within the payment time limit, the patent right shall become extinguished after the expiration of the original due payment date;
4. where the patentee abandoned the patent, the patent right shall extinguished from the date the patentee wrote a declaration.
Where the applicant unintentionally failed to pay a patent annuity within the late payment time set forth in Paragraph 1 of Article 94, the patentee may apply for reinstatement of the patent rights within one year from the due date for effecting the payment by paying triple the amount originally due, and the Specific Patent Agency shall publish with respect to the above.
Article 71 Grounds for invalidation
Any person may request for invalidation against an invention patent with the Specific Patent Agency under any of the following circumstances:
1. where there is a violation of Articles 21 to 24, Article 26, Article 31, Paragraphs 1 and 3 of Article 32, Paragraph 4 of Article 34, Paragraph 2 of Article 43, Paragraphs 2 and 3 of Article 44, Paragraphs 2 to 4 of Article 67, or Paragraph 3 of Article 108 of this Act;
2. where the home country of the patentee does not accept the patent applications filed by nationals of the ROC; and
3. where there is a violation of Paragraph 1 of Article 12, or where the invention patentee is not entitled to file the invention patent application.
An invalidation request based on Subparagraph 3 of the preceding paragraph shall only be filed by the interested party.
With respect to ground(s) of an invalidation request against an invention patent, the provisions in effect at the time of the said patent approved shall govern. However, if an invalidation request is filed based on the ground(s) under Paragraph 4 of Article 34, Paragraph 2 of Article 43, Paragraph 2 and Paragraph 4 of Article 67 or Paragraph 3 of Article 108, the provisions in effect at the time of filing the said request shall govern.
Article 72 Invalidation against extinguished patent
Where the interested party possesses recoverable legal interests due to the invalidation of a patent, such interested party may request for invalidation after the said patent has become extinguished ipso facto.
Article 73 Invalidation request
An invalidation request shall be submitted with a statement reason(s), and accompanied by evidence.
Where a patent contains more than one claim, an invalidation request may be filed for each claim.
An invalidation statement shall not be modified or added after filing, but it can be narrowed.
An invalidation requester may supplement invalidation reasons or evidence within one month after the date of filing the said request; however, supplementary reason(s) and/or evidence submitted prior to rendering a decision shall still be examined.
Article 74 Invalidation proceedings
Upon receipt of the request stated in the preceding Article, the Specific Patent Agency shall send a copy of such request to the patentee.
Within one month after sending the copy of the request, a response shall be submitted by the patentee. If the patentee fails to submit such response, the invalidation proceedings shall be conducted directly, unless the patentee has requested for extension with reason(s) beforehand and such extension has been approved.
The Specific Patent Agency may conduct invalidation proceedings directly if the supplementary reason(s) or evidence by the invalidation requester is likely to delay the proceedings or if the fact and evidence submitted has been sufficiently clear.
Article 75 Principle of Ex officio
When conducting an invalidation proceedings, the Specific Patent Agency may, ex officio, examine the reason(s) and evidence not submitted by the invalidation requester if the said reason(s) and evidence are within the scope of the invalidation statement, and notify the patentee to submit a response within a time limit. The invalidation proceedings shall be conducted directly if the patentee fails to submit a response within the time limit.
Article 76 Interview and inspection in invalidation proceedings
When conducting an invalidation proceedings, the Specific Patent Agency may, upon a request or ex officio, notify the patentee to take any of the following actions within a time limit:
1. to appear at the Specific Patent Agency for interview;
2. to perform necessary experiment(s) or submit model(s) or sample(s).
Where experiment(s) or model(s) or sample(s) performed as stated in Subparagraph 2 of the preceding paragraph, the Specific Patent Agency may, when necessary, visit the site or a designated place for inspection.
Article 77 Joint proceedings of invalidation and amendment
If, during the invalidation proceedings, a request for amendment is filed, the said proceedings and amendment shall be conducted jointly, then decisions concerned shall be rendered jointly as well. If the Specific Patent Agency considers the said amendment approvable, it shall send a copy of the amended description, claim(s) and/or drawings to the invalidation requester.
Where there is more than one request for amendment, the earlier amendment shall be deemed to have been withdrawn.
Article 78 Joint proceedings of multiple invalidation requests
Where there is more than one invalidation request filed against the same patent, when necessary, the invalidation proceedings of the said requests may be conducted jointly by the Specific Patent Agency.
Where the invalidation proceedings have been conducted jointly pursuant to the preceding paragraph, decisions concerned may also be rendered jointly.
Article 79 Assignment of examiner for invalidation
When conducting invalidation proceedings, the Specific Patent Agency shall designate patent examiners, render a decision and serve the same to the patentee and the invalidation requester.
Decision on an invalidation request shall be rendered on a claim-by-claim basis.
Article 80 Restriction of withdrawal of invalidation
An invalidation request may be withdrawn by the requester before a decision concerned has been rendered. However, if the patentee has already submitted a response, such withdrawal shall be consented from the patentee.
The Specific Patent Agency shall notify the patentee of the withdrawal of an invalidation request. If the patentee raises no objection within ten days after the notice has been served, it shall be deemed that the patentee has agreed to such withdrawal.
Article 81 Principle of ne bis in idem
Under any of the following circumstances, any person shall not be allowed to separately request for invalidation against the same patent based on the same facts and evidence:
1. where another invalidation request filed based on the same facts and evidence has been considered groundless by a decision;
2. where new evidence is submitted with the Intellectual Property Court pursuant to Article 33 of the Intellectual Property Case Adjudication Act, and considered groundless by a judgment.
Article 82 Decision of invalidation
Where an invalidation request against an invention patent is considered well grounded, the patent right shall be invalidated; such invalidation may be made on a claim-by-claim basis.
Invalidation of an invention patent right shall become final and binding under any of the following circumstances:
1. where no administrative remedy proceedings are filed in accordance with laws;
2. where administrative remedy proceedings are filed but dismissed finally and bindingly.
Where an invention patent is invalidated finally and bindingly, the effect of patent right shall be deemed never to have existed.
Article 83 Procedures to be applied mutatis mutandis to invalidation against patent term extension
With respect to an invalidation request filed against patent term extension of an invention patent under Paragraph 1 of Article 57 of this Act, the provisions in this Act with respect to invalidation requests against invention patents shall apply mutatis mutandis.
Article 84 Publication in the Patent Gazettes
An invention patent with respect to grant, change, extension, prolongation, assignment, trust, licensing, compulsory licensing, revocation, extinguishment, establishment of a pledge, invalidation decisions, as well as other matters which should be published are to be published in the Patent Gazettes.
Article 85 Patent Registry
The Specific Patent Agency shall maintain a Patent Registry, in which the patent grants, changes of patent rights, and all other matters required by laws shall be registered.
The Patent Registry set forth in the preceding paragraph may be produced in electronic means and shall be made available to the public for reading, transcribing, photographing, or photocopying.
Article 86 Publication by electronic means
Matters which should be laid open and published by the Specific Patent Agency in accordance with this Act may be done by electronic means; the commencement date thereof shall be decided by the Specific Patent Agency.
Section 5 Compulsory Licensing
Article 87 Grounds for compulsory licensing
In response to national emergency or other circumstances of extreme urgency, the Specific Patent Agency shall, in accordance with an emergency order or upon notice from the central government authorities in charge of the business, grant compulsory licensing of a patent as needed, and notify the patentee as soon as reasonably practicable.
Under any of the following circumstances, for which a compulsory patent licensing is necessary, the Specific Patent Agency may, upon request, grant compulsory licensing of a patent:
1. where the patented invention is exploited non-commercially for enhancement of public interest;
2. where a later invention or utility model patent cannot be exploited without infringing a prior invention or utility model patent, and where the later invention or utility model patent involves an important technical advancement of considerable economic significance in relation to the prior invention or utility model patent;
3. where a patentee has committed acts restricting competition or has committed unfair competition acts, which have been determined via a judgment issued by a court or a decision issued by the Fair Trade Commission of the Executive Yuan.
Applying for compulsory license of a patent covering semiconductor technology shall be filed based on the grounds set forth in Subparagraphs 1 and 3 of the preceding paragraph.
Applying for compulsory license of a patent in accordance with Subparagraphs 1 through 2 of Paragraph 2 may only be permitted if the requestor for compulsory license has made efforts to obtained authorization from the right holder on reasonable commercial terms and conditions, and that such efforts have not been successful within a reasonable limit of time.
Request for compulsory licensing of a patent in accordance with Subparagraph 2 of Paragraph 2, the owner of the prior patent may propose reasonable terms and conditions and seek grant of compulsory license of the later patent owned by the requestor.
Article 88 Procedure and decision of compulsory license
After receiving an application for compulsory license as filed in accordance with Paragraph 2 of the preceding Article or Article 90, the Specific Patent Agency shall notify the patentee concerned and require the patentee to submit a statement of defense within a designated time limit. If no statement of defense is submitted within the designated time limit, the examination of the compulsory license request shall be proceeded accordingly.
The exploitation under a compulsory license shall be authorized predominantly for the supply of the domestic market. The above shall not apply to compulsory license granted in accordance with Subparagraph 3, Paragraph 2 of the preceding Article.
A decision on a request for compulsory license shall be made in writing, and shall indicate the reasons, scope, duration, and the required remuneration.
A compulsory license shall not affect the exercise of patent right by the patentee concerned.
The right granted under compulsory license shall not be assigned, entrusted, inherited, licensed or pledged except for the following circumstances:
1. where a compulsory license is granted in accordance with Subparagraph 1 or Subparagraph 3, Paragraph 2 of the preceding Article, it is assigned, entrusted, inherited, licensed or pledged with the business involving the exploitation of the patent;
2. where a compulsory license is granted in accordance with Subparagraph 2 of the preceding paragraph or Paragraph 5 of the preceding Article, it is assigned, entrusted, inherited, licensed or pledged with the patent owned by the licensee.
Article 89 Termination of compulsory license
Where a compulsory license granted in accordance with Paragraph 1 of Article 87 is considered no longer necessary by the central government authority in charge of the business, the Specific Patent Agency shall terminate the compulsory license upon a notice from the central government authorities in charge of the business.
The Specific Patent Agency may, upon request, terminate the grant of compulsory license under any of the following circumstances:
1. where the fact warranting the compulsory license has been changed and compulsory licensing is no longer necessary;
2. where the licensee fails to properly exploit the patent as required in the compulsory license ;
3. where the licensee fails to pay the remuneration as determined by the Specific Patent Agency.
Article 90 Compulsory licensing of pharmaceuticals: grounds; procedures
For purposes of assisting countries with insufficient or no manufacturing capacities in pharmaceutical sector to obtain pharmaceutical product(s) needed in treating HIV/AIDS, tuberculosis, malaria and other epidemics, the Specific Patent Agency shall, upon request, grant compulsory license for the requestor to exploit a patent concerned for the purpose of producing such pharmaceutical products(s) and its export to eligible importing countries.
A request for compulsory license filed in accordance with the preceding paragraph may only be permitted if the requestor has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time; however, the above shall not apply if compulsory licensing of the required pharmaceutical product(s) has been granted in the importing country. If the importing country concerned is a WTO member, the requestor, when filing a request according to Paragraph 1, shall submit evidentiary documents proving that the importing country has fulfilled the following:
1. the Council for Trade-related Aspects of Intellectual Property Rights has been notified of the name(s) and expected quantities of the pharmaceutical product(s) needed;
2. the Council for Trade-related Aspects of Intellectual Property Rights has been notified of its intention as an importer and has established that it has insufficient or no manufacturing capacities in the pharmaceutical sector. However, such evidentiary document(s) is (are) not needed if the importing country is a least-developed country;
3. the required pharmaceutical product(s) is (are) not patented in the importing country, or where the pharmaceutical product(s) is(are) patented in its territory, it has granted or intends to grant a compulsory license.
The so called "least-developed countries" mentioned in the preceding paragraph refers to countries announced by the United Nations (UN) as being least-developed countries.
If the importing country is not a WTO member, but is a least-developed country or is a country with insufficient or no manufacturing capacities in the pharmaceutical sector, when filing a request for compulsory license according to Paragraph 1, the requestor shall submit evidentiary documents proving that the importing country has fulfilled the following conditions:
1. the name(s) and expected quantities of the pharmaceutical product(s) needed have been filed in writing with the foreign affairs authorities of the ROC;
2. stating that it agrees to prevent re-exportation of the pharmaceutical product(s) needed.
Article 91 Compulsory licensing of pharmaceuticals: export; remuneration
Pharmaceutical product(s) produced under compulsory license in accordance with the preceding Article shall be exported to the importing country entirely, and the quantity of the product authorized to be produced shall not be more than the quantity reported by the importing country in its notice sent to the Council for Trade-related Aspects of Intellectual Property Rights or the foreign affairs authorities of the ROC.
Pharmaceutical product(s) produced under compulsory license granted in accordance with the preceding Article shall be marked with the basis of the licensing on the external packaging thereof in accordance with the direction specified by the Specific Patent Agency; the packaging, coloring or shaping of the pharmaceutical product(s) produced under compulsory license shall be sufficiently distinguishable from pharmaceutical product(s) produced by the patentee or his/her licensee(s).
A licensee of a compulsory license shall pay appropriate remuneration to the patentee. The amount of remuneration shall be decided by the Specific Patent Agency, taking into account the economic value of the patent involving the required pharmaceutical product(s) to the importing country with reference to the human development index issued by the United Nations.
Before exporting the pharmaceutical product(s) produced under a compulsory license, the licensee of such compulsory license shall post on a website the quantities, name(s) and destination(s) of such pharmaceutical product(s), as well as distinguishing features of the pharmaceutical product(s).
Inspection and registration of the pharmaceutical product(s) produced and exported under compulsory licensing in accordance with the preceding Article shall not be bound by the Paragraph 2, Article 40ter of the Pharmaceutical Affairs Act.
Section 6: Payment of Fees
Article 92 Fees
With respect to each request for patent-related matters, the requestor shall pay fees at the time of filing.
For a granted invention patent, the patentee shall pay a patent certificate fee and patent annuities. If extension or prolongation of patent term is allowed, patent annuities shall still be paid during the extended or prolonged patent term.
Article 93 Time limit on payment of annuity
The annuity for an invention patent shall be paid commencing from the publication date. Payment of the first year annuity shall be made in accordance with the provision set out in Paragraph 1, Article 52 hereof, while the payment of the second year annuity and the annuities thereafter shall be made prior to the expiration of each patent payment year.
The annuity for several years may be paid at one time. Under such circumstance, if the annuity rate is adjusted upwardly, the patentee concerned will not be required to pay the deficit.
Article 94 Addition of annuity
If the annuity for the second or any subsequent payment year is not paid within the original time limit, a late payment can be made within six months from the original due date with a specified percentage addition.
Payment of additional annuities based on the specified percentage as stated in the preceding paragraph means additional annuities will be needed on a monthly basis depending on the time limit elapsed from the original due date. For every month that has elapsed, an additional fee at a ratio of 20% is needed with a maximum of additional fee which is same as the amount originally due. The elapsed time limit from one day to one month shall be deemed one month.
Article 95 Reduction of annuity
Where the patentee of an invention patent is a natural person, school or small and medium enterprise, the patentee may apply with the Specific Patent Agency for a reduction of patent annuities.
Section 7 Damages and Action
Article 96 Right to claim in the event of patent right infringement
A patentee of an invention patent may demand a person who infringes or is likely to infringe the patent right to stop or prevent such infringement.
In the case of infringement of an invention patent with intent or due to negligence, the patentee may claim for damages suffered therefrom.
When making a demand pursuant to Paragraph 1, the patentee may request for destruction of the infringing articles or the materials or implements used in infringing the patent, or request for other necessary disposal.
An exclusive licensee may, within the licensed scope, make demands in accordance with the preceding three paragraphs. However, if it is otherwise provided for in an agreement, such agreement shall prevail.
Where the inventor’s right to be indicated as such is infringed, the inventor may request to have his/her name indicated or take other measures necessary to recover his/her reputation.
The rights to claim provided for in Paragraph 2 and the preceding paragraph shall become extinguished if not exercised within two years from the date on which the patentee become aware of the damage and the person liable for damages. This right shall also become extinguished if it is not exercised within ten years from the time of infringement.
Article 97 Calculation of damages
Damages claimed in accordance with the preceding Article may be calculated according to any of the following methods:
1. the method provided in Article 216 of the Civil Code; patentee may claim damages based on the amount of the balance derived by subtracting the profit earned through exploiting the patent after infringement from the profit normally expected through exploiting the same patent, if no method of proof can be produced to prove the damage suffered;
2. the profit earned by the infringer as a result of patent infringement;
3. the equivalent amount of royalty that may be collected from exploiting the invention patent under licensing.
Article 98 Marking of patent certificate number
The patent certificate number of a patent shall be marked on the patented article. If such marking cannot be fixed on the patented article, the patentee may make such marking on the labels or packaging, or make such marking in a distinct way sufficient to draw other persons’ attention. Where no patent marking is made, evidence shall be produced when claiming damages to prove that the infringer knows or has a reason to know the said article is under patent protection.
Article 99 Presumption of manufacture process used
Where an article made by using a patented manufacturing process which is unknown within and outside of this country before the filing of a patent application for the manufacturing process, an article identical thereto made by another person shall be presumed as having been manufactured by using said manufacturing process.
The presumption made under the preceding paragraph may be rebutted by producing proof to the contrary. A proof made by the defendant that the process used by him in manufacturing the article at issue is different from the patented process shall be deemed as proof to the contrary. The legitimate rights and interests with respect to the manufacturing and trade secrets disclosed by the defendant when producing evidence, shall be fully protected.
Article 100 Forwarding an original copy of judgment
A court shall forward to the Specific Patent Agency an original copy of a judgment issued thereby for a patent litigation case involving an invention patent.