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 below:
Firstly, Article 135 of the Law as amended extends the term of a design patent from 12 years to 15 years to expand the protection of design patents.
Secondly, to expand the scope and term of patent division after a patent is granted, the past requirement that an invention patent cannot be divided until 30 days after it is granted is amended in Article 34 of the Law, which contains the relaxed requirement that a division application may be filed within three months after the preliminary examination decision to grant a patent or the reexamination decision to grant a patent is delivered, and the new requirement also applies to utility patents.
Thirdly, to avoid examination delay, Article 73 of the Law as amended contains a further restriction that requires an invalidator to submit supplemental reasons in three months and reasons submitted beyond such period will not be considered.
Fourthly, since a utility patent does not go through substantive examination, Article 118 of the Law is amended to prevent third-party rights and interests from being affected by any arbitrary amendment to the scope of a utility patent after the fact by basically limiting the timing of patent amendment application, except for exceptions, to the following circumstances: (1) the utility patent currently has a pending application involving a technical report for utility patent; or (2) there is currently a lawsuit pending with respect to the utility patent.
Finally, Article 143 as amended stipulates that only application documents, specifications, claims, abstracts, drawings and descriptions of drawings in a patent file which the dedicated patent authority believes to be valuable for retention should be retained permanent. As for the rest, depending on the types, (1) application files for an invention patent shall be retained for 20 years or, in case of a granted patent, 30 years; (2) application files for a utility patent shall be retained for 10 years or, in case of a granted patent, 15 years; and (3) the application files for a design patent shall be retained for 15 years, or in case of a granted patent, 20 years.