Main Changes of Patent Law in Taiwan Between 2002~2004

[ August 2004 ] >Back
I. The new Invention Patent system will be effective as of October 26, 2002

Early publication and substantive examination system:


The application will be laid-opened after 18th months from the next day of its filing date or the priority date. The applicant can request for the laid-open early within 15 months from the next day of its filing date or the priority date, if necessary. The request of delaying the laid-open of a patent application is not acceptable.


Within three years of the filing date of the application, any one can apply for substantive examination thereof. Or, the application will be deemed as withdrawn. The substantive examination can be applied together with the filing of the new patent application.


After the request of substantive examination, an interested third party can apply for speeding up the examination for commercial use when a laid-opened application has not been granted for publication yet.


After the patent application is laid-opened, the technology may be used by any interested party. However, the inventor is unable to allege any patent right since the patent application has not been granted for publication. The inventor can issue notices to those interested parties when the application is laid-opened and require certain compensation on this matter within two years after the application is granted, if the interested parties are continually using the technology of the patent.


No matter the laid-opened patent application is withdrawn later or not, it will be qualified as being the cited references to the other later patent applications if it is the case.


New filing requirement for complying with the above new Invention Patent system:


Below the Abstract of the specification, the designated drawing (the most characteristic one) should be indicated. In addition, the main numerals of each elements of the designated drawing should also be indicated.


The Chinese characters of the Abstract should be within 250 words.


If there is any chemical formula in an Invention application, one of the most characteristic chemical formula should be shown below the Abstract.


The new regulations for the voluntary supplemental or amendments to the specification or drawings after the operation of above early publication system:

The applicant can actively apply for the supplemental or amendments to the specification or drawings before or at the following stages:


before 15 months from the next day of its filing date or the priority date;


when requesting for the substantive examination;


within 3 months of receiving the official notice of proceeding with substantive examination, if the substantive examination is requested by a third party, other than the applicant.

II.The new patent law will be effective as of July 1, 2004

As of July 1, 2004, the new patent law will be effected in Taiwan. The main amendments are:


The substantive examination for Utility Model applications has been amended into a formal examination only.


Addition of new regulations to introduce the technical report system for Utility Model applications.

Since there is no longer any substantive examination of Utility Model applications, regulations regarding technical report have been adopted for Utility Model applications. Any party can apply for technical report up to the ROCIPO when the Utility Model application is published. In addition, when the patentee of a Utility Model application asserts his patent right, the patentee should submit a technical report, which is made by the ROCIPO, for the Utility Model application.


Certified priority documents can be supplemented within four months from the date of filing (originally, the limit was three months from the date after filing).


A request for re-examination can be filed within 60 days (originally, 30 days) from the date of receipt of the official rejection. However, such extension shall not apply to utility model applications since a formal examination system without the procedure of the substantive examination shall apply thereto.


If a utility model application is formally rejected due to a formality problem under the formal examination, the applicant should file a Petition of Appeal to the Ministry of Economic Affairs for administrative relief.


An invalidation application, pursuant to a violation of the new Article 12.1--when a patent is owned by two or more persons, all related persons should jointly file the patent application or the new Article 67.1(3)--where the patentee is found to be a person other than the person entitled to file the patent application, must be raised by an interested party. Except for the above, any party may file an invalidation application pursuant to other reasons.


The request to convert a patent application (among invention, utility model, design and associated deign applications) must be made within 60 days (originally, 30 days) from the date of receipt of the official notification.


For utility model applications, the applicant may supplement or amend the specifications or drawings within two months of filing. The scope of such supplement or amendment may not extend beyond the original scope of the application.


Abolishing the opposition system during the publication period in order to integrate the opposition and invalidation systems for patents.
Presently, the existence of the opposition system is an obstacle for applicants to obtain patent rights. Since the legal proceedings and effects under administrative appeals for the opposition applications are almost the same as those of the invalidation applications, the opposition system is abolished from the revised Patent Law.


Shortening the time to obtain a Letters Patent.
Presently, a Letters Patent will be issued after the three-month publication period with the payment of the official fee. Since the opposition system is abolished under the amended Patent Law, a Letters Patent can be issued soon after the grant of a patent with the payment of the official fee. Therefore, the applicant can obtain a Letters Patent more quickly under the amended Patent Law.


The dependent claim(s) for Invention and Utility Model patents should be written in Japson type, which contains the preamble part and characteristic part of the patent. A Utility Model application should include formal drawings.