September 2016

 
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DRAFT AMENDMENT TO TAIWAN PATENT ACT FOR TPP ACCESSION

Dr. Joyce Ho, Ethan Wang, Tsar and Tsai Law Firm (Taiwan)

In order to join the Trans-Pacific Strategic Economic Partnership Agreement (TPP), Taiwan has been drafting the amendments to the intellectual-property related acts to reduce the legislative discrepancies between Taiwan and TPP regulation. The draft amendment to Taiwan Patent Act has been submitted to the Executive Yuan on May 10, 2016.

Most provisions of Taiwan Patent Act are in line with the TPP IP provisions. However, there are certain legislative discrepancies requiring amendment of Taiwan Patent Act to meet the higher standard of protection under TPP IP provisions. In the draft amendment, three primary parts are provided: (1) Grace period; (2) Patent term extension; and (3) patent linkage system.

Grace Period
The current Taiwan Patent Act provides the grace period of six months for the following events: (1) the invention concerned was publicly disclosed as a result of conducting a test; (2) the invention was disclosed in a printed publication; and (3) the invention was displayed at an exhibition held or recognized by the Government.

The draft amendment to Taiwan Patent Act loosen these rules. The events where the applicant intends to disclose his/her invention are no longer limited to the above-mentioned events. As long as the applicant intends to, the disclosure of the invention is accepted to claim the grace period. In addition, the grace period of six months would be extended to 12 months. However, the events for grace period do not include applicant’s patent publication.

This above amendment of Taiwan Patent Act may encourage the potential applicant to file a patent application. The intentional disclosure by the applicant within twelve months before the filing date would not block the inventor to obtain a patent. The applicant also has more time to prepare the required documents after the disclosure of his/her invention.

Patent Term Extension
The current Taiwan Patent Act stipulates that the pharmaceutical or agrichemical patent application can only obtain a patent term extension for the delay due to applying for a permit. The delay caused by Taiwan Intellectual Property Office (“TIPO”) during the examination period is not sufficient grounds to seek a patent term extension under the current Taiwan Patent Act.

The draft amendment to Taiwan Patent Act adds the provision that the patent term extension may be obtained due to the examination delay attributable to the TIPO. Patent term is calculated from the filing date of the patent application. The longer examination period is, the shorter patent term could be obtained. In the draft amendment to the Taiwan Patent Act, if the patent application is not yet approved after (1) five years from the filing date (hereinafter “Period (1)”) or (2) three years from requesting for substantial examination (hereinafter “Period (2)”), the applicant could request for patent term extension within three months from the publication date of the granted patent. The selection from Period (1) and Period (2) depends on which one is longer. However, the patent term extension has to deduct the period attributable to the applicant from Period (1) or Period (2), such as the voluntary request by the applicant for later submission of the response to the office action. Moreover, the patent term extension is limited to a maximum five years.

In addition, since the Utility Model patent application is under formality examination and the examination period of Design patent application generally lasts within one year, the provision of patent term extension will only apply to Invention patent application.

The above amendment will extend the legal protection of the invention and the patentee could enjoy a longer exclusive right for his/her patent.

Patent Linkage
The draft amendment to Taiwan Patent Act also creates the legal basis to file a patent litigation in response to the patent linkage prescribed in the draft of Pharmaceutical Affairs Act. Under the patent linkage system, when an applicant applies for a drug permit for a generic drug, they must make a declaration if there is any patent relevant to the generic drug. If the applicant declares that the patent relevant to the generic drug should be revoked or is not infringed by the generic drug, the patentee will be notified.

The draft amendment to Taiwan Patent Act allows the patentee to file a patent litigation against the applicant for the drug permit upon being notified, even if the generic drug has not yet infringed upon the patent at that moment. Nevertheless, the patentee may decide not to file a patent litigation against the applicant. In this case, the applicant for the drug permit is entitled to seek a declaration judgement on whether the drug infringes upon the patent.

This above amendment to the Taiwan Patent Act is intended to settle any dispute between the generic-drug manufacturer and patentee before the generic drug is sold in the market.

Conclusion
The draft amendment to Taiwan Patent Act in intended to be further amended in any following legislative proceeding. Once the draft amendment to Taiwan Patent Act is effective, the patent right for the patentee would be more protected.

 

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