Patent 彙整 - Lee, Tsai & Partners

Eddie Shih and Jane Tsai 1. Summary of court judgment The Intellectual Property and Commercial Court (hereinafter, the “Court”) rendered the judgment 110-Xing-Zhuan-Su-3 on August 19, 2021, holding that the artificial intelligence DABUS shall not be a patent inventor and […]

2021 年 5 月 17 日

Introduction of the Draft Amendments to the Patent Law – Review and Dispute Trial (Taiwan)

Eddie Shih[1] and Jerry Huang[2] The Patent Law of Taiwan was amended in its entirety on January 1, 2013, following by its partial amendments in 2013, 2014, 2017 and 2019. The Ministry of Economic Affairs released the draft partial amendments […]

2020 年 11 月 1 日

The “interested parties” who may file an invalidation on the ground that the patentee of a utility model patent is not the person entitled to file the application include the actual inventors, creators or whose assignees or successors or parties with a relationship of employment or commissioned research and development (Taiwan)

Albert Yen The Supreme Administrative Court rendered the 109-Pan-325 Decision of June 11, 2020 (hereinafter, the “Decision”), holding the “interested parties” who may file an invalidation on the ground that the patentee of a utility model patent is not the […]

2020 年 9 月 1 日

An invention cannot be patented if it can be easily accomplished by a person having ordinary skill in the art of the invention based on the prior art prior to the application (Taiwan)

Luke Hung The Supreme Administrative Court rendered the 109-Pan-211 Decision of April 16, 2020 (hereinafter, this “Decision”), holding that an invention cannot be patented if it can be easily accomplished by a person having ordinary skill in the art of […]

2020 年 8 月 1 日

The term “using” under Article 22 of the Patent Act shall include producing, offering for sale, selling, using, or importing that product for the aforementioned purposes. To determine that an invention has been publicly used, its technical contends must have been made public through the aforementioned acts and not necessitated by the actual making, offering for sale, selling, using, or importing that product for the aforementioned purposes by the public. (Taiwan)

Albert Yen The following decision relates to Article 22 of the Patent Act (Patent Act of 2003, not the current law.) The term “using” in that article was amended to “exploiting” in 2013. The Supreme Administrative Court rendered the 109-Pan-28 […]

2020 年 6 月 1 日

Whether the requirement for “identical invention” under Article 28 of the Patent Law is met should be determined based on whether the invention set forth in the patent application claims is disclosed in the specification, patent application claims or drawings of the counterpart serving as the basis for claiming the right of priority (Taiwan)

Luke Hung The Supreme Administrative Court rendered the 108-Pan-518 Decision of November 13, 2019 (hereinafter, the “Decision”), holding that whether the requirement for “identical invention” under Article 28 of the Patent Law is met should be determined based on whether […]

2020 年 4 月 1 日

The so-called “availability to the public” concerning prior art during the examination of inventive steps means that a prior art reference has been disclosed with its technical details in such a state that they become available to the public, and it is not required that the technical details have actually been known to the public (Taiwan)

Luke Hung The Supreme Administrative Court rendered the 108-Pan-446 Decision of September 20, 2019 (hereinafter, the “Decision”), holding that the so-called “availability to the public” concerning prior art during the examination of inventive steps means that a prior art reference […]

2020 年 3 月 1 日

The inventive steps of a patent should be examined based on the technical contents disclosed in its citation documents (Taiwan)

Luke Hung The Supreme Administrative Court rendered the 108-Pan-329 Decision of July 5, 2019 (hereinafter, the “Decision”), holding that the inventive steps of a patent should be examined based on the technical contents disclosed in its citation documents, including contents […]

2019 年 6 月 30 日

The Patent Law is amended to extend the term of a design patent from 12 years to 15 years and to enhance examination efficiency (Taiwan)

2019.4.16 Luke Hung The Legislative Yuan adopted the amendments to the Patent Law (hereinafter, the “Law”) during the 9th Meeting of the 7th Session of the 9th Term of the Legislative Yuan on April 16, 2019. The amendments are highlighted […]

2019 年 5 月 31 日

Unless a specification has clearly indicated that the patent claims should be limited to embodiments and drawings, the restrictive conditions of the specification and drawings should not read on the patent claims (Taiwan)

2019.3.8 Hsiao-Han Su The Supreme Administrative Court rendered the 108-Pan-100 Decision of March 8, 2019 (hereinafter, the “Decision”), holding that unless a specification has clearly indicated that the patent claims should be limited to embodiments and drawings, the restrictive conditions […]

2019 年 4 月 30 日

If an invention whose patent rights have been granted is deemed in violation of the Patent Law, evidence may be submitted to the dedicated agency to invalidate the patent; and if the evidence is verified, a disposition that upholds the invalidation should certainly be rendered (Taiwan)

2019.1.10 Hsiao-Han Su The Supreme Administrative Court rendered the 108-Pan-12 Decision of January 10, 2019 (hereinafter, the “Decision”), holding that if an invention whose patent rights have been granted is deemed to be in violation of the Patent Law, evidence […]

2018 年 6 月 30 日

Amendments to the Rules for Approving the Extension of Patent Term (Taiwan)

2018.4.11 Luke Hung The Rules for Approving the Extension of Patent Term (hereinafter, the “Rules”), which consist of 10 articles and came into effect on April 1, 2018, were jointly amended on April 11, 2018 by the Ministry of Economic […]

2018 年 3 月 31 日

Except when a description has clearly indicated that the patent claims should be limited to embodiments and drawings, the restrictive conditions of the description and drawings should not read on the patent claims (Taiwan)

2017.11.16 Jane Tsai The Supreme Administrative Court rendered the 106-Pan-634 Decision of November 16, 2017 (hereinafter, the “Decision”), holding that except when a description has clearly indicated that the patent claims should be limited to embodiments and drawings, the restrictive […]

2017 年 11 月 30 日

When a patent claim is examined, the overall context of the claim should still be observed to understand its complete literal meaning(Taiwan)

2017.7.27 Jane Tsai The Supreme Administrative Court rendered the 106-Pan-401 Decision of July 27, 2017 (hereinafter, the “Decision”), holding that when a patent claim is examined, the overall context of the claim should still be observed to understand its complete […]

2017 年 8 月 8 日

A technical evaluation report for utility model patent is not a precondition for bringing an action or exercising patent rights

2017.01.12 Jane Tsai The Intellectual Property Court rendered the 105-Min-Zhuan-Shang-30 Civil Decision of January 12, 2017 (hereinafter, the “Decision”), holding that a technical evaluation report for utility model patent is not a precondition for bringing an action or exercising patent […]

2017 年 8 月 8 日

The major obligation of patent licensors is to allow their licensees to exercise patent rights pursuant to the licensing agreement during the term of license, but they are not obligated to transfer patent rights to the licensees(Taiwan)

Lenore Chen The Taiwan High Court rendered the 104-Shang-1279 Civil Decision (hereinafter, this “Decision”) of June 1, 2016, holding that the major obligation of patent licensors is to allow their licensees to exercise patent rights pursuant to the licensing agreement […]

2017 年 8 月 8 日

Although the examination of inventive steps may be conducted by determining a combination of invalidation evidence, still it should be considered if such combination is obvious to persons with ordinary skills in the art associated with the invention(Taiwan)

Luke Hung The Supreme Administrative Court rendered the 105-Pan-298 Decision of June 8, 2016 (hereinafter, the “Decision”), holding that although the examination of inventive steps may be conducted by determining a combination of invalidation evidence, still it should be considered […]

2017 年 8 月 8 日

Partial Amendments to the Enforcement Rules of the Patent Law(Taiwan)

Jane Tsai The Ministry of Economic Affairs (hereinafter, the “MOEA”) promulgated Articles 26, 51 and 53 of the Enforcement Rules of the Patent Law as amended via the MOEA-Jing-Zhi-10504602860 Directive of June 29, 2016. First, applicants are encouraged to file […]

2017 年 7 月 31 日

If a court fails to ascertain whether the technical features of patent claims and a product have any substantive difference and whether they can be easily thought up or easily substituted, the court decision is in contravention of the laws or regulations(Taiwan)

2017.4.24 Jane Tsai The Supreme Court rendered the 106-Tai-Shang-585 Civil Decision of April 24, 2017 (hereinafter, the “Decision”), holding that if a court fails to ascertain whetherthe technical features of patent claims and a product have any substantive difference and […]