The Taiwan Intellectual Property Office Announced a Draft Amendment to the Patent Act
The Taiwan Intellectual Property Office (TIPO) recently announced a draft amendment to the Patent Act, which involves 20 articles, with two additions, 17 amendments, and one deletion. The main points of the draft amendment are summarized hereunder.
- Broadening the scope of applicability of image designs
According to Article 121.II of the Patent Act, computer-generated icons and graphic user interfaces to be eligible for design patents are required to be applied to articles. However, with the development of digital technologies, such as metaverse, virtual reality and augmented reality, images generated through computer programs or other digital technologies are no longer necessarily applied to articles. Based on the draft amendment, the restriction that image designs should be applied to articles is to be removed. Instead, “images generated through computer programs or other digital technologies” are to be specified as statutory subject matter for design patents. Also, acts for exploiting image designs are to be clarified by enumeration.
- One application containing multiple similar designs
According to Article 127.I of the Patent Act, similar designs owned by the same person are required to be filed in separate applications for a design patent and its derivative design patent(s). However, since it is common in industries that multiple similar designs are derived from a single design concept, by referring to the practices of the Hague System, United States, European Union, etc., the Patent Act is to be amended to allow an applicant to file one application containing multiple similar designs.
- Extending the grace period for design patents
According to Article 122.III of the Patent Act, the grace period for design patents is six months. To be harmonized with the international practices, such as in the United States, European Union, Japan, South Korea, etc., the Patent Act is to be amended to extend the grace period for design patents from six months to twelve months.
- Relaxing the time limit for requesting division of design patent applications
According to Article 130.II of the Patent Act, a request for division of a design patent application should be made while the design patent application is pending at the TIPO. Based on the draft amendment, the above time limit is to be relaxed such that division of a design patent application can be requested within three months after a decision of allowance on the design patent application is served.
- Ways for resolving a dispute concerning the entitlement of a right to apply for a patent or of a patent right
According to Articles 71.I(3), 119.I(3) and 141.I(3) of the Patent Act, an invalidation action against an invention, utility model or design patent can be filed if the right to apply for a patent is jointly owned but the patent application was not filed by all the joint owners, or if the patentee is not the owner of the right to apply for a patent. However, in practice such disputes cannot be effectively resolved through invalidation actions because of the difficulties for the TIPO to substantively investigate the facts and evidence involved. Based on the draft amendment, the grounds for invalidation actions under the above provisions are to be canceled, and it is to be prescribed that a dispute concerning the entitlement of a right to apply for a patent or of a patent right should be resolved through mediation, arbitration or litigation.
- Transitional provisions
In addition, the draft amendment includes provisions concerning the principles for handling invalidation actions and design patent applications during the transition period of the Patent Act.
