Article 156 (Added)

Where, prior to the implementation of the amendment to this Act, patent applications that have been found to violate Paragraph 1 of Article 28, Paragraph 1of Article 28 applicable mutatis mutandis under Article 108, and Paragraph 1 of Article 28 applicable mutatis mutandis under Paragraph 1 of Article 129 of this Act, and thus lost priority claims in accordance with Paragraph 3 of Article 28, Paragraph 3 of Article 28 applicable mutatis mutandis under Article 108 or Paragraph 3 of Article 28 applicable mutatis mutandis under Paragraph 1 of Article 129 of this Act, if decisions have not been issued for these patent applications at the time of implementation of the amendment, and if, for invention and utility model patent applications as well as for design patent applications, a period of sixteen (16) months and a period of ten (10) months from the earliest priority date has not elapsed respectively, Paragraph 4 of Article 29, Paragraph 4 of Article 29 applicable mutatis mutandis under Article 122, and Paragraph 4 of Article 29 applicable mutatis mutandis under Paragraph 1 of Article 144 of this Act shall apply.

Our comments:
 
Article 29 in the amendment of the Patent Act provides the conditions of reinstating the priority claim and loosens the time limit for supplementing the priority documents.

Before the amendment enters into force, if, without intent, one fails to make a declaration of claiming priority when filing his/her patent application or fails to submit the priority document(s) within four months after filing, it is still available for the applicant to apply for reinstatement of priority claim or submit the priority document(s) within sixteen (16) months after the earliest priority date where priority is claimed for Invention or Utility Model patent applications or within ten (10) months for Design applications if official decisions have not been issued for these applications at the time of implementing this amendment.

For applications filed to seek invention patent term extension, which have been filed prior to implementation of the amendment to this Act, if decisions have not been issued for these applications and if the said invention patents are still in force at the time of implementing the amended Act, the amended Act shall govern.

Our comments: 

Article 52 of the current Patent Act provides that the application for an extension of a patent term shall be permitted only when the length of time required for obtaining an approval from the central government authority exceeds two (2) years after the publication of the patents.

However, the amendment of Patent Act has deleted such limit. Therefore, for applications filed to seek invention patent term extension, which have been filed prior to implementation of the amendment to this Act and satisfy the conditions set in this article, the amended Act shall govern.

If any of the following events exists at the time of implementing the amendment to this Act, Paragraph 4 of Article 52, Paragraph 2 of Article 72, Paragraph 4 of Article 52 applicable mutatis mutandis under Article 122, Paragraph 2 of Article 72 applicable mutatis mutandis under Article 122, Paragraph 4 of Article 52 applicable mutatis mutandis under Paragraph 1 of Article 144, and Paragraph 2 of Article 72 applicable mutatis mutandis under Paragraph 1 of Article 144 shall not apply:
1. Where, at the time of implementing the amendment to this Act, the time period for paying an annuity has expired and the concerned patent has been deemed non-existent ab initio pursuant to Paragraph 1 of Article 51, Paragraph 1 of Article 101, or Paragraph 1 of Article 113 of this Act in effect prior to the amendment; and
2. Where, at the time of implementing the amendment to this Act, a patent has become extinguished in accordance with Paragraph 3 of Article 66, Paragraph 3 of Article 66 applicable mutatis mutandis under Article 108, or Paragraph 3 of Article 66 applicable mutatis mutandis under Paragraph 1 of Article 129 of this Act in effect prior to amendment.

Our comments: 

According to the Article 52 of the amended Patent Act, if an applicant, without intent, fails to pay the Issue fee and the first annuity prior to expiry the official due date regulated in this Article, he/she may pay the Issue fee and double the first annuity within six (6) months from the original due date so that the Patent Authority shall publish the patent grant. 

Furthermore, According to the Article 72 of the amended Patent Act, if a patentee, without intent, fails to pay an annuity within six (6) months from the original due date, he/she may apply for reinstating the patent right within one (1) year from the due date for effecting a late payment by paying triple the amount originally due, and the Patent Authority shall publish with respect to the above.

However, the above regulations shall not apply to the following conditions:
(1) Time periods for paying Issue fee and the first annuity have expired and the concerned patents have been deemed non-existent ab initio prior to implementing this amendment before the time of implementing the amendment to this Act.
(2) The patent rights have become extinguished ipso facto because of failing to effect the payment of a patent annuity for the second year or any year thereafter within the grace period before the time of implementing the amendment to this Act.

Where, at the time of implementing the amendment to this Act, a decision for a design patent application has not been issued, the applicant may, within three (3) months after the implementation date of the amended Act, apply to convert it into an application covering a partial design.

Our comments: 

Presently, it is not accepted to file a partial design patent application. For those design patent applications, which are partial designs in nature, filed before the implementation date of the amended Act and decisions for those design patent applications have not yet been issued, they can be converted into partial design patent applications within three months after the implementation date of the amended Act.

Where, at the time of implementing the amendment to this Act, a decision has not been issued for an associated design patent application, the provisions of this Act prior to amendment with respect to associated design patent shall apply.
For associated new design patent applications for which decisions have not been issued at the time of implementing the amendment to this Act, if these associated design patent applications were filed prior to the publication of their original design patent applications, the applicants may apply to convert these patent applications into derivative design patent applications within three (3) months as of the implementation of the amended Act.

Our comments:
 
Since a derivative design patent can be enforced independently and its effect shall be extended to the scope of similar designs according to Article 139 of the amended Patent Act, the applicants are allowed to convert associated design patent applications filed under the present Act into derivative design patent applications within three (3) months after the implementation date of the amended Act in consideration of the best interests of the applicants. However, it is subject to the conditions that the decisions have not been issued for the associated design patent applications and the associated design patent applications were filed before their original design patent applications are published at the time of implementing the amended Act.

Our introduction of the amended Patent Act is finished. We will keep you informed closely when the date of implementing the amended Act is announced by the TIPO.

For filing an application for registration of a patent, a trademark or handling of affairs pertaining thereto by an applicant of mainland China who has no residence or business office in the territory of Taiwan, a patent agent or a trademark agent, who has duly been registered in the Government Office in charge of patent or trademark affairs, shall be appointed to act on the Applicant's behalf.

The agents in charge of Patent applications or Patent affairs set forth in the preceding paragraph should be limited to patent attorneys, lawyers and patent agents.

The required application documents prepared by the mainland Chinese applicant can be in simplified Chinese characters. However, the documents in traditional Chinese thereof should be submitted before the dates specified by the Patent Authority.
For a patent application, where the specification and all necessary drawings submitted are written in simplified Chinese, and the traditional Chinese version thereof has been supplemented prior to the date specified by the Patent Authority, the date on which the simplified Chinese version of such documents are submitted shall be regarded as the filing date of such patent application. Failure to submit the traditional Chinese version thereof by or on the specified date shall cause the patent application to be dismissed provided, however, that if the traditional Chinese version has been supplemented prior to the execution of the dismissal, the date on which the traditional Chinese version is submitted shall be regarded as the filing date.

*Our comments: It is acceptable to file the documents and specifications in simplified Chinese first to get an earlier filing date and supplement the traditional Chinese version prior to the date specified by the Patent Authority.

For the applicants in mainland China, the Patent Authority may, as it deems necessary, require the identity document for a juridical person or the certificate of incorporation.
When the documents are in simplified Chinese, the Patent Authority may, as it deems necessary, require the traditional Chinese version/translation thereof.
The documents shall be verified by the authority appointed or a civilian organization entrusted by Executive Yuan as it deems necessary.

*Our comments: The identity document for a juridical person or the certificate of incorporation is not required mostly when the mainland Chinese applicants file a patent or trademark application in Taiwan since March 3, 2011though it may be required when the examiners of the TIPO deem it necessary.