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Laws & Regulations Database of The Republic of China (Taiwan)

Print Time:2024/05/21 21:48
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Chapter Law Content

Title: PATENT ACT CH
Category: Ministry of Economic Affairs(經濟部)
Chapter II Invention Patent
Section 3 Examination and Reexamination
Article 36
Assignment of a patent examiner for examination
The Specific Patent Agency shall assign a patent examiner to conduct the substantive examination of a patent application for invention.
Article 37
Early publication of patent application
After receiving application documents and determining through examination that the application conforms to stipulated formality requirement and contains no elements that may be deemed unsuitable for laying open, the Specific Patent Agency shall lay open the patent application for invention eighteen (18) months since its filing.
The Specific Patent Agency may advance the laying-open of a patent application upon the request of the applicant.
A patent application for invention shall not be laid open under any of the following circumstances:
1. where it is withdrawn within fifteen (15) months after its filing date;
2. where it involves national defense secrets or any other secrets pertaining to national security; or
3. where it is contrary to public order or morality.
Where a priority is claimed, the calculation of time period set forth in Paragraph 1 and the preceding paragraph shall be on the basis of the priority date; where two or more priorities are claimed, the calculation thereof shall be on the basis of the earliest priority date.
Article 38
Request for substantive examination
A request to the Specific Patent Agency for substantive examination of a patent application for invention may be made by any person within three (3) years after the filing date of the patent application.
Where a division request is made pursuant to Paragraph 1 of Article 34 or where a patent application is converted into a patent application for invention pursuant to Paragraph 1 of Article 108, if the time period set forth in the preceding paragraph has lapsed, a request for substantive examination may be made within thirty (30) days after such request for division or conversion.
A request for substantive examination according to the preceding two paragraphs shall not be withdrawn.
Where a request for substantive examination is not filed within the time period prescribed in Paragraph 1 or Paragraph 2, the patent application for invention shall be deemed to have been withdrawn.
Article 39
Request procedures for substantive examination
A request form for substantive examination referred to in the preceding Article shall be submitted.
The Specific Patent Agency shall publish the facts regarding a request for substantive examination in the Patent Gazette.
Where the substantive examination is requested by a person other than the invention patent applicant, the Specific Patent Agency shall notify the invention patent applicant of such fact.
Article 40
Prioritized examination of a patent application for invention
The Specific Patent Agency may upon request conduct prioritized examination of a patent application for invention if it is commercially exploited by a person other than the applicant after it is laid open.
Relevant document(s) of proof shall be submitted when filing a request referred to in the preceding paragraph.
Article 41
Effect of laying open an application
An invention patent applicant may, after the publication of an invention patent application, claim appropriate compensation against the exploiter who, having been given a written notice by the applicant in respect of the contents of the invention after the laying-open of the invention patent application, continues to commercially exploit the invention after receiving the notice and prior to the publication of the said application.
The claim referred to in the preceding paragraph may also be made against a person who is fully aware that the patent application for invention has been laid open but continues to commercially exploit the invention prior to its publication. The right to claim compensation as provided in the preceding two paragraphs does not affect the exercise of other rights. However, where an applicant having filed a patent application for invention and a patent application for utility model pursuant to Article 32 of this Act has been granted the utility model patent, the claim against such exploiter shall only be made based either on the right to claim compensation or on the utility model patent right.
The right to claim compensation as set forth in Paragraph 1 and 2 shall become extinguished if not exercised within two (2) years after the publication date of the said invention patent.
Article 42
Interview and inspection in examination of application
When examining a patent application for invention, the Specific Patent Agency may, upon request or on its own initiative, notify the applicant to conduct any of the following actions within a specified time period:
1. to appear before the Specific Patent Agency for an interview; or
2. to perform necessary experiment(s) or submit model(s) or sample(s).
The Specific Patent Agency may, when necessary, visit the site or a designated place to carry out inspection on the experiment(s) performed or model(s) or sample(s) to be submitted pursuant to Subparagraph 2 of the preceding paragraph.
Article 43
Amendment during examination; final notice
Unless otherwise stipulated in this Act, when examining a patent application for invention, the Specific Patent Agency may, upon request or on its own initiative, notify the applicant to amend the description, claim(s), or drawings within a specified time period.
Except for correction of translation errors, any amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.
Where the Specific Patent Agency has issued a notice pursuant to Paragraph 2 of Article 46, a patent applicant shall only make amendment(s) within the specified time period in the notice.
The Specific Patent Agency may, as it deems necessary, issue a final notice after having issued a notice prescribed in the preceding paragraph. The applicant who is to amend claim(s) after a final notice has been issued shall only make the following amendments within the time period specified therein:
1. to delete claim(s);
2. to narrow down the scope of claim(s);
3. to correct errors; or
4. to clarify ambiguous statement(s).
In case of a violation of the provisions in the preceding two paragraphs, the Specific Patent Agency shall state the reasons in a written decision and render such decision accordingly.
The Specific Patent Agency may issue a final notice accordingly if the original patent application or its divisional application meets any of the following conditions:
1. where the content of the notice issued for the original patent application is same as that of the notice issued for the divisional patent application;
2. where the content of the notice issued for the divisional patent application is same as that of the notice issued for the original patent application; or
3. where the content of the notice issued for a divisional application is same as that of the notice issued for other divisional application(s).
Article 44
Foreign language documents
Where a patent applicant submits a description, claim(s), and drawing(s) prepared in a foreign language pursuant to Paragraph 3 of Article 25, such foreign language documents shall not be amended.
The Chinese translation submitted pursuant to Paragraph 3 of Article 25 shall not extend beyond the scope of content disclosed in the original foreign language documents as filed.
Any correction of translation errors in the Chinese version as stated in the preceding paragraph shall not extend beyond the scope of content disclosed in the original foreign language documents as filed.
Article 45
Decision of examination
Upon completion of examination of a patent application for invention, a written decision shall be rendered and served on the applicant.
When a patent application is determined to be unpatentable, the reason(s) shall be given in the written decision of examination.
A written decision of examination shall bear the name of the patent examiner. This requirement shall also apply to written decisions for reexamination, post-grant amendment, invalidation, patent term extension and invalidation against patent term extension.
Article 46
Grounds for rejection of invention patent application
When a patent application for invention is in violation of the provisions set forth in Articles 21 through 24, Article 26, Article 31, Paragraphs 1 and 3 of Article 32, Article 33, Paragraph 4 and the forepart of Paragraph 6 of Article 34, Paragraph 2 of Article 43, Paragraphs 2 and 3 of Article 44, or Paragraph 3 of Article 108, a decision of rejection shall be rendered.
Before rendering a decision in accordance with the preceding paragraph, the Specific Patent Agency shall notify the applicant to file a response within a specified time period. If the applicant fails to make a response within the time period, a decision of rejection shall be rendered accordingly.
Article 47
Publication of patented invention and application for browsing
A claimed invention shall be patented if there is no reason for negating its patentability, and the claim(s) and the drawing(s) of the patent application shall be published.
Any person may apply for viewing, transcribing, photographing, or photocopying the written decision of examination, description, claim(s), abstract, drawing(s), and the file wrapper in connection with a patent application which has been published, except for the information which should be kept confidential by the Specific Patent Agency in accordance with laws.
Article 48
Reexamination
An invention patent applicant dissatisfied with a decision of rejection may provide reason(s) to request a reexamination within two (2) months after the date on which the decision of rejection is served. If the patent application is not accepted or dismissed for formality defects or on the ground of ineligibility of the applicant, the applicant may directly file administrative remedy actions in accordance with the laws.
Article 49
Amendment during reexamination
Where a decision of rejection is rendered pursuant to Paragraph 2 of Article 46, the applicant may amend the description, claims, or drawing(s) during the reexamination stage.
Where a final notice has been issued before the decision of rejection is rendered for a patent application, any amendment made during the reexamination stage shall still be subject to limitations set forth in each subparagraph of Paragraph 4 of Article 43. The above shall not apply to reexamination, if the Specific Patent Agency finds that the final notice issued in the original examination procedure was improper.
The Specific Patent Agency may issue a final notice accordingly under any of the following circumstances:
1. where the reason(s) for reexamination still entails grounds for unpatentability;
2. where the amendment(s) made during the reexamination stage still entails grounds for unpatentability; or
3. where an amendment made in accordance with the preceding paragraph is in violation of the subparagraphs of Paragraph 4 of Article 43.
Article 50
Assignment of a patent examiner for reexamination
For reexamination, the Specific Patent Agency shall assign a patent examiner who did not participate in the examination of the concerned patent application to conduct reexamination and render a written decision to be served on the applicant.
Article 51
Confidentiality of invention involving national security
Where, through examination, an invention involves national defense secrets or any other secrets pertaining to national security, the Ministry of National Defense or relevant national security authorities shall be consulted for their comments; if it is deemed necessary to keep such invention confidential, the application documents of the said patent application shall be sealed. If a request for substantive examination has been filed for the said patent application, an examination decision shall be rendered and served to the applicant and the inventor.
The applicant, patent agent and the inventor shall keep confidential the invention referred to in the preceding paragraph; the right to apply for a patent for such invention shall be deemed to have been abandoned if there is any violation of the confidentiality requirement.
The confidentiality period shall last for one (1) year after the date on which a written decision is served on the applicant, and such period may be extended on an annual basis. The Specific Patent Agency shall consult with the Ministry of National Defense or relevant national security authorities one (1) month prior to the expiration of the confidentiality period and, if confidentiality is no longer required, such patent application shall be laid open.
Where an invention referred to in Paragraph 1 is approved and where confidentiality is deemed unnecessary for such patent application, the Specific Patent Agency shall publish the grant of the invention patent after receiving patent certificate fee and the first-year annuity paid within three (3) months by the applicant. If the said fees are not paid prior to the time period stated above, no publication shall be made.
The Government shall pay a considerable compensation for the loss suffered by the applicant during the confidentiality period.
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