The Taiwan Intellectual Property Office (hereinafter referred to as “TIPO”) proposed a draft of Patent Act Amendment (hereinafter referred to as “Draft”) as an effort seeking to harmonize the current patent institution with the dynamic international systems and to fortify examination procedures. The Draft was published in December of 2017 for public review and inputs, with following emphasis.
Extending the 12-month window for claiming international priority to 14 months (Article 28)
Relaxing rules for divisional application after grant (Articles 34, 107, and 142)
Reinstatement of request for substantive examination in lapse of three years (Article 38)
Fair use of published patent application or granted patent (Article 47)
Extending term of design patent from 12 years to 15 years (Article 135)
Open licensing stipulation (Article 63-1)
Examination of post-grant amendment for utility models (Article 118)
Late submission of evidence and grounds and the limitations on post-grant amendment during a pending invalidation action (Article 73, 74, and 77)
Digests on Selected Emphasis of the Draft
A divisional application can be filed during examination pendency of an application or 30 days from the service of allowance decision issued at the first examination stage. Now, to offer the applicant more time in considering divisional filing, after service of allowance decision issued from either first examination or re-examination stage the applicant would have three (3) months to file for a divisional application. The 3-month extended window for filing a divisional is also comparable with the time frame for payment of issue fee from service of allowance. The applicant may consider both at the same time and choose necessary step.
What is particularly pinpointed in the Draft is that a divisional filing made during the 3-month window shall exclude the scope that is allowed. In fact the same rule has been stipulated now in the Enforcement Rule of Patent Act but is only proposed to be elevated to the Patent Act.
Some practitioners propose additional rules, among others, to allow dividing a granted patent into plural sub-patents while retaining the entire protectable scope in combination intact. This is so proposed in light that the patentee may gain advantage in a likely licensing negotiation by having “more” patent certificates on hand. Meanwhile the TIPO is also financially benefited from receiving more maintenance fees.
With respect to the request for substantive examination, the Draft is to allow additional two (2) months upon lapse of three (3) years for an unintentional applicant to reinstate the request by paying more fees.
On the other hand, the Draft aims to allow a more liberal use of granted patents and the publication of invention patent applications. Reproduction, public transmittance, or translation of a published granted patent and its associated prosecution history will be permitted and considered as fair use. The same kinds of use shall apply to published patent application for inventions.
Open licensing of a patent is independently provided in a brand new provision. As per Article 63-1, in reference to German and Britain legislature, a patentee may declare to the TIPO in writing to license anyone undiscriminatingly in return of a reasonable royalty fee. Note that an open license is voluntary at the discretion of a patentee. The patentee may later withdraw an open license declaration if there is no licensee(s) or a consent from active licensee(s).
The gist of the open license clause is to exempt an allegedly infringing party who has agreed to the terms of open licensing to practice the patent. Some practitioners however stay pessimistic on the efficacy of the same. Given that International entities and domestic companies in larger scale hold for a significant share of Taiwanese patents in whole, they are proactively safeguarding their intellectual properties by securing patent rights as defensive assets in their business operation. Under such circumstance the majority of Taiwanese patent holders are not likely to license. While some practitioners presume that the rest patents owned by smaller entity are less economically attractive, the incentive to license for practice becomes rather immature.