Newsletter
Draft Amendments to the Patent Act
In response to the development of emerging digital industries and judicial practices, the Intellectual Property Office ("IPO") of the Ministry of Economic Affairs ("MOEA") announced draft amendments to the Patent Act on 11 September 2024. Individuals who have opinions or suggestions for the draft amendments may submit their written feedback to the IPO within 60 days from the day following the announcement of the draft. Key points of the draft amendments are hereby summarized as follows.
1. Expansion of the scope of protection for design patents to include digital image designs: The amendments loosen the restriction that image designs must be applied to "articles" and clarify the types of implementation of the designs.
2. Introduction of the system for filing multiple similar designs in a single application: In line with international frameworks such as the Hague Agreement, and the practices of the EU, and the U.S., the amendments introduce a system that allows for the filing of multiple similar designs in a single application. Amendments to the related provisions on post-grant amendments and patent invalidation are made in order to align with the aforementioned amendments.
3. Extension of the grace period for design patents: The grace period for design patents is extended from 6 months to 12 months.
4. Relaxation of the timing for filing divisional applications for design patents: Taiwan's current Patent Act stipulates that a divisional application for a design patent should be filed before the decision of re-examination of the parent patent application. The draft amendments loosen the timing, allowing the divisional application of design patents to be submitted within 3 months after the delivery of the allowance decision of re-examination of the parent patent application. Amendments to the grounds for rejecting patents and the grounds for invalidation are also made in order to align with the aforementioned amendments.
5. Removal of disputes over the ownership of patent application rights or patent rights as grounds for invalidation: The amendments clarify that a rightful owner of patent-applying right shall request the return of the right and resolve the related disputes through civil proceedings. Corresponding provisions are added in order to align with the aforementioned amendments.
6. Transitional provisions: Transitional provisions are provided to determine the applicability of new and old laws.
The draft amendments do not include the related provisions on "Inter Parties Proceedings," which were originally intended to be introduced into Taiwan by the previous draft amendments submitted to the Legislative Yuan. (The previous draft was passed by the Executive Yuan on 9 March 2023 and was first scheduled for review at the Legislative Yuan on 5 May 2023. However, the previous draft was not reviewed due to the election of legislators held in January 2024.)
For details on the draft amendments, please refer to the TIPO's website. (https://www.tipo.gov.tw/tw/cp-86-979687-69f9a-1.html)