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The amendment of the Patent Act regarding the grace period for invention patents and the utility models, which was promulgated on January 18 2017, became effective on May 1 2017. The purpose of the amendment is to encourage the disclosure and circulation of techniques and to provide applicants with an enhanced possibility of obtaining patent protection for disclosed inventions and sufficient time to prepare their patent applications.
The amendment includes the following four provisions:
The grace period for invention patents and utility models is extended from six months to 12 months before the date on which the patent application is filed in Taiwan according to Articles 22(3) and 122(3) of the amended Patent Act.
The types of disclosure that enjoy the grace period are not limited to public disclosure due to experiment, publication, an exhibition sponsored or approved by the government or disclosure not intended by the patent applicant. According to Articles 22(3) and 122(3) of the amended Patent Act, any type of disclosure may enjoy the grace period whether the disclosure is intentionally or unintentionally made by the applicant unless the Patent Act stipulates otherwise.
If techniques are disclosed in a gazette in Taiwan or a foreign country in accordance with the laws as a consequence of filing a patent application and intentionally made by the applicant, the applicant will not be able to enjoy the amended grace period as per Article 22(4) of the amended Patent Act.
According to the amendment, applicants do not need to claim the grace period in order to benefit from the same, and neither are applicants required to provide details and proof of the disclosure at the time they file their patent applications. The applicant can benefit from the grace period even after filing the patent application.
It is not yet clear how the authorities will apply and explain “disclosures unintentionally made by applicants”. According to the legislative reasons recorded for the amendment, a ‘disclosure unintentionally made by the applicant’ means that the applicant did not intend to disclose the contents of the patent techniques the subject of his or her application, but the contents were disclosed nonetheless. For example, an unintentional disclosure could occur where the contents of techniques are plagiarised and disclosed.
Disclosures made due to mistake or negligence are also deemed to be “disclosures unintentionally made by the applicant”. For example, where the applicant mistakenly believed that the party to which the disclosure was made had a duty to maintain the disclosed content in confidence, but actually the disclosed party did not have such duty, the disclosure will be deemed to have occurred unintentionally. Similarly, a situation where the applicant has no intention to disclose, but a person employed or appointed by the applicant mistakenly or negligently discloses the patent techniques, will be deemed to be unintentional disclosure.
The legislative reasons for the amendment also explain that a “disclosure intentionally made by the applicant” is a disclosure made due to the applicant’s will or behaviour, including instances where the applicant discloses the techniques by himself or herself, where the applicant agrees to disclosure by others and where the disclosure is not restricted to the applicant’s personal behaviour.