28 Feb 2013 |

Principles to deal with the patent matters during the transition stage from the former Patent Act to the amended One

The amended Patent Act was promulgated on December 21, 2011 by President Order and has been entered into force on January 01, 2013. Therefore, the TIPO has compiled the questions and principles to deal with the patent matters during the transition stage from the former Patent Act to the amended one. Article Situation Act to […]

Logo_JAW-HWA1The amended Patent Act was promulgated on December 21, 2011 by President Order and has been entered into force on January 01, 2013. Therefore, the TIPO has compiled the questions and principles to deal with the patent matters during the transition stage from the former Patent Act to the amended one.

Article

Situation

Act to be applied

Amended

Act

Former Act
Article 22 The six-month grace period expansively applied to “inventive step” Patent applications which have been filed prior to the implementation of the amended Act are still pending at the time of the implementation of the amended Act. ●
Article 22 The applicant may claim the grace period for disclosing his/her invention in any kind of printed publication by himself/herself within 6 months before the filing date. The printed publications are not limited to academic publications. Before the implementation of the amended Act, the applicant disclosed his/her invention in a printed publication by himself/herself and filed the patent application by claiming grace period. ●
The applicant disclosed his/her invention in a printed publication by himself/herself before the implementation of the amended Act, but filed the patent application by claiming grace period after the implementation of the amended Act. ●
Article 25 It’s no longer necessary to submit a photocopy of the assignment of the right to file a patent application while filing. The date specified by the TIPO for supplementing the said document has not yet been due after the implementation of the amended Act. ●
Article 27 For an invention patent involving any biological material or the utilization of any biological material, the applicant shall, within four months after the filing date of the patent application or within sixteen months after the priority date, submit a certificate of deposit, indicating the depository, date of deposit and depository number. Where the applicant failed to state that it’s an invention patent involving biological material or the utilization of biological material while filing, after the implementation of the amended Act, if the applicant supplements a certificate of deposit, indicating the depository, date of deposit and depository number within four months after the filing date of the patent application or within sixteen months after the priority date, it will be deemed that the applicant has made the statement. ●
Article 29 (Article 142) When claiming priority, the applicant shall submit a certified copy of the first patent application issued by the foreign patent authority within sixteen months from the earliest priority date (ten months for a design patent application). The date specified by the TIPO for supplementing the said document not only has not yet been due after the implementation of the amended Act but is still within the period of four months after the filing date of the patent application or within sixteen months after the priority date. ●
Article 29  IVWhere, unintentionally, no priority claim is made at the time of filing a patent application or priority claim is deemed not having been made, the applicant may, within sixteen months after the earliest priority date, apply for reinstatement of priority claim by paying the required fee and simultaneously make a declaration with respect to the filing date of the first patent application, the country or member of WTO in or for which the first patent application was filed and the application number of the first patent application. The patent applications which have been filed prior to the implementation of the amended Patent Act, are still pending at the time of implementation of the amendment of this Act, and for invention and utility model patent applications, the period of sixteen months, or for design patent applications, the period of ten months from the earliest priority date has not elapsed respectively. ●
Article 30 Extending the time limit for claiming priority based on an earlier invention or a utility model patent application in the ROC The earlier invention or utility model patent applications are still pending at the time of the implementation of the amendment of this Act. ●
The earlier invention or utility model patent application has been published or has been irrevocably rejected at the time of the implementation of the amendment of this Act. ●
Article 32 Where an applicant filed an invention patent application and a utility model patent application for the same creation on the same date prior to the implementation of the amended Patent Act The invention patent application is still pending at the time of the implementation of the amendment of this Act. ●
Article 34 Extending the time limit for applying a divisional applicationA divisional application shall be filed within thirty days from the date on which an approval decision for the original patent application has been served. However, it shall not be filed if a reexamination decision has been rendered. The approval decision is served prior to the implementation of the amended Act and the thirty-day period for filing a divisional application has been expired before the implementation of the amended Act ●
The approval decision is served prior to the implementation of the amended Act, but at the time of the implementation of the amended Act, it is still within the thirty–day period for filing a divisional application. ●

Article 43 deleting time limit for applicants wishing to amend applications; final notice;

Article 44 correction of translation errors

 The patent application is filed before the implementation of the amended Act, but is still pending at the time of the implementation of the amendment of this Act. ●

Article 48

Where an applicant of an invention patent application is dissatisfied with a rejection decision rendered for his/her patent application, he/she may apply for a reexamination with reason(s) within two months after the date on which the rejection decision is served. (sixty days in former act)

 The reexamination is filed before the implementation of the amended Act. ●
The reexamination is filed after the implementation of the amended Act. ●
The timing for charging the fees by the items of claims for filing a reexamination, an invalidation or requesting for a utility model patent technical report Filing a reexamination, an invalidation or requesting for a utility model patent technical report before the implementation of the amended Act; ●
Filing a reexamination, an invalidation or requesting for a utility model patent technical report after the implementation of the amended Act; ●

Article 52

Where applicant unintentionally failed to pay the issue feeand the first year patent annuity within three months from the date of receiving the allowance decision, the applicant may pay the issue fee and two times the patent annuities of the first year within six months after the time limit expired.

 The patent right has been inexistent ab initio before the implementation of the amended Act. ●
The three-month period for paying the issue fee and the first year hasn’t yet expired at the time of the implementation of the amendment of this Act. ●

Article 70

Where the applicant unintentionally failed to pay a patent annuity within six months from the expiration of each patent payment year, the patentee may apply for reinstatement of the patent rights within one year from the due date for effecting the payment by paying triple the amount originally due.

 The patent right has become extinguished before the implementation of the amended Act. ●
The six-month grace period for the late payment of the second year annuity or any subsequent patent annuity hasn’t yet expired at the time of the implementation of the amendment of this Act. ●

Article 94 Addition of annuity

If the annuity for the second or any subsequent payment year is not paid within the original time limit, a late payment can be made within six months from the original due date with a specified percentage addition which will be needed on a monthly basis. For every month that has elapsed, an additional fee at a ratio of 20% is needed with a maximum of additional fee which is same as the amount originally due. The elapsed time limit from one day to one month shall be deemed one month.

 The late payment for the second or any subsequent payment year is made before the implementation of the amended Act. ●
The six-month grace period for the late payment of the second year annuity or any subsequent patent annuity hasn’t yet expired at the time of the implementation of the amendment of this Act. ●
Although the six-month grace period for the late payment of the second year annuity or any subsequent patent annuity hasn’t yet expired at the time of the implementation of the amendment of this Act, the late payment for the second or any subsequent payment year has been made before the implementation of the amended Act. ●

Article 71 Grounds for invalidation

With respect to ground(s) of an invalidation request against an invention patent, the provisions in effect at the time of the said patent approved shall govern. However, if an invalidation request is filed based on the ground(s) in relation to division, amendment and conversion of application extending beyond the scope of content of the description, claim(s), or drawing(s) of the original patent application as filed, the provisions in effect at the time of filing the said request shall govern.

 The invalidation is filed before the implementation of the amendment of this Act, but is still pending for examination at the time of the implementation of the amendment of this Act. ●

Article 73 the statement of reasons of invalidation is required.

An invalidation request shall be submitted with a statement reason(s), and accompanied by evidence.

 The invalidation is filed before the implementation of the amendment of this Act, but is still pending for examination at the time of the implementation of the amendment of this Act. (It’s not necessary to supplement the statement of reasons.) ●
The invalidation is filed after the implementation of the amendment of this Act. ●
The decision of invalidation has been made by the TIPO before the implementation of the amendment of this Act. The invalidation is under the procedures of relief at the time of the implementation of the amendment of this Act. Then the decision made by the TIPO is revoked and the invalidation is remanded to the TIPO for another administrative action. (It’s not necessary to supplement the statement of reasons.) ●

Amended Invalidation procedures:

  1. Article 75 Principle of Ex officio
  2. Article 77 Joint proceedings of invalidation and amendment
  3. Article 78 Joint proceedings of multiple invalidation requests
  4. Article 80 Restriction of withdrawal of invalidation
  5. Article 81 Principle of ne bis in idem
The invalidation is filed before the implementation of the amendment of this Act, but is still pending for examination at the time of the implementation of the amendment of this Act. ●
The invalidation is filed after the implementation of the amendment of this Act. ●
The decision of invalidation has been made by the TIPO before the implementation of the amendment of this Act. The invalidation is under the procedures of relief at the time of the implementation of the amendment of this Act. Then the decision made by the TIPO is revoked and the invalidation is remanded to the TIPO for another administrative action. ●

Article 108 Conversion of application

An application for patent conversion shall be applied within thirty days since serving a decision rejecting the original utility model patent application

 An application for patent conversion is filed prior to the implementation of the amendment of this Act. ●
An application for patent conversion is filed at the time of or after the implementation of the amendment of this Act. ●

Article 118 Amendment of granted patent

With respect to examination of a request for patent amendment, except for the situation set forth in Paragraph 1 of Article 77, applicable mutatis mutandis under Article 120 of this Act, the Specific Patent Agency shall conduct formality examination of the patent amendment, issue a decision and serve it on the patentee.

 The request for patent amendment is filed prior to the implementation of the amendment of this Act, but is still pending for examination at the time of the implementation of the amendment of this Act. ●

Article 121 partial design is available.

 Design patent applications which have been filed before the implementation of the amendment of this Act, but are still pending at the time of the implementation of the amended Act. ●
Under the same situation above, the applicants may request for converting the said design patent applications into partial design patent applications within three months as of the implementation of the amended Act. ●

Article 121 Computer –Generated Icons (Icons) and Graphical User Interface (GUI) are available to be filed and registered as design patents.

 Design patent applications for Icons and GUI which have been filed before the implementation of the amendment of this Act, but are still pending at the time of the implementation of the amended Act. ●

Article 129 design for a set of articles

Two or more articles belonging to the same class and are customarily sold or used together may be filed as for one design.

 Design patent applications for a set of articles which have been filed before the implementation of the amendment of this Act, but are still pending at the time of the implementation of the amended Act. ●

Article 131 Conversion between design patent and derivative design patent

 The applicant has registered A design patent and then he/she filed B design patent application before the implementation of the amendment of this Act. The examiner deems his/her B design patent is similar to A design patent. In this regard, B design patent is not allowed to be converted into a derivative design patent because B design patent is filed after A design patent is granted.

–

–
The B design patent application is filed when the A design application is pending by the same applicant. When the examiner deems the same applicant’s B design patent is similar to A design patent and requests the applicant to convert B design patent into the derivative design patent of A design patent, the amended Act has been entered into force for more than three months. In this regard, it is still available for the B design patent to be converted into a derivative design patent because the time limit of three months is only applied to an associated design patent but not an independent design patent. ●

Article 156 & 157

The applicant may convert an associated design patent application into partial or derivative design patent application within three months as of the implementation of the amended Act.

 Associated design patent applications which have been filed before the implementation of the amendment of this Act, but are still pending at the time of the implementation of the amended Act ●
Under the same situation above, the applicants may request for converting said associated design patent applications into partial or derivative design patent applications within three months as of the implementation of the amended Act. ●

Article 5 of the Enforcement Rules of the Patent Act

When the applicant submits a new patent application to the TIPO by ordinary mail (instead of a registered mail), the date of receipt by the TIPO shall be the postmark date.

 The postmark date on the envelop is on or before December 31, 2012.(The date of receipt is the date on which the TIPO receives the documents.) ●
The postmark date on the envelop is on or after January 1, 2013. ●

Article 53 of the Enforcement Rules of the Patent Act

If color is claimed, drawings or photos of the design shall be made in color. (It is no longer necessary to state the industrial color guide codes of all colors or with color cards but they may still be submitted for reference.)

Article 51 III (1) of the Enforcement Rules of the Patent Act

If no color is claimed, it should be stated in the description of creation.

 Before the implementation of the amended Act, the design patent was filed with color drawings, but didn’t state whether color is claimed in the description of creation. After the implementation of the amended Act, if the design patent application is still pending, the examiner will specify a period of time for the applicant to make a clarification. ●

 

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES
10-1FL., NO.23, SEC.1, CHANG-AN E. RD.,TAIPEI10441,TAIWAN, R.O.C
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http://www.jaw-hwa.com.tw    E-mail: jawhwa@nulljaw-hwa.com.tw

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