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

Print Time:2024/05/21 22:26
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Chapter Law Content

Title: PATENT ACT CH
Category: Ministry of Economic Affairs(經濟部)
Chapter II Invention Patent
Section 4 Patent Rights
Article 52
Payment of fees and publication
For a patent application for invention that is approved, the grant of such patent application shall be published only when the patent certificate fee and the first-year patent annuity are paid by the applicant within three (3) months after the date on which the approval decision is served; if the fees are not paid within the said time period, no publication shall be made.
A patent right granted to a patent application for invention shall start from the publication date of the patent, and a patent certificate shall be issued thereto.
The term of an invention patent shall expire after a period of twenty (20) years from the filing date of the application.
Where the applicant unintentionally fails to pay the required fees within the time period set forth in Paragraph 1 or Paragraph 4 of the preceding article, the applicant should pay the patent certificate fee and two times the first-year patent annuity within six (6) months after the period has expired. After the said payment has been made, the Specific Patent Agency shall publish the patent.
Article 53
Extension of patent term
Where a regulatory approval shall be obtained in accordance with other laws and regulations for the exploitation of an invention patent involving a pharmaceutical or agrichemical, or the manufacturing process thereof, if such regulatory approval is obtained after the publication of the concerned invention patent, the patentee may apply for one and only one extension of the patent term of said invention patent based on the first regulatory approval. The said regulatory approval is allowed to be used only once for seeking patent term extension.
The extension of the patent term approved under the preceding paragraph shall not exceed the length of time when the patent cannot be exploited because of the filing of a request for the regulatory approval with the central competent authorities in charge of the business. If the time needed to obtain the said regulatory approval exceeds five (5) years, the granted patent term extension shall still be five (5) years.
The term "pharmaceutical" as set forth in Paragraph 1 does not include any veterinary drug.
When requesting for patent term extension as provided in the Paragraph 1, a request form and document(s) of proof must be submitted to the Specific Patent Agency within three (3) months after obtaining the first regulatory approval; no request for patent term extension shall be filed within six (6) months prior to the expiry of the original patent term.
When making a decision on an application for patent term extension, the Specific Patent Agency shall take into consideration the impact on public health and shall coordinate with the central competent authorities in charge of the business to formulate the regulations concerned.
Article 54
Deemed to have been extended
Where a request for patent term extension is filed in accordance with the preceding article, the patent term shall be deemed to have been extended if the Specific Patent Agency has yet to render a decision before the original patent term expires. However, where such request for patent term extension is not allowed, the patent term shall expire on the original expiration date.
Article 55
Assignment of a patent examiner for extension request
The Specific Patent Agency shall assign a patent examiner to examine a request for patent term extension, render a written decision and serve it on the patentee.
Article 56
Scope of patent term extension
The scope of a patent, of which a term extension has been granted, shall be limited to only the effective ingredients and use stated in the regulatory approval concerned.
Article 57
Invalidation of patent term extension
Any person may file an invalidation action of the granted patent term extension to the Specific Patent Agency, together with document(s) of proof, under any of the following circumstances:
1. where it is unnecessary to obtain the regulatory approval to exploit the invention patent concerned;
2. where neither the patentee nor licensee has obtained the regulatory approval;
3. where the granted term of extension exceeds the period during which the patent cannot be exploited;
4. where the requester of the patent term extension is not the patentee;
5. where the regulatory approval of extension request is not the first approval, or a request for extension based on the said regulatory approval has been made;
6. where the pharmaceuticals involved in the granted patent term extension are veterinary drugs.
If an invalidation decision revoking the patent term extension has become final and binding, the granted patent term extension shall be deemed non-existent ab initio. However, if such final and binding invalidation decision of revocation is rendered due to violation of Subparagraph 3 of the preceding paragraph, only the exceeding period of the extension shall be deemed non-existent.
Article 58
Effects of invention patent right
Unless otherwise provided for in this Act, the patentee of an invention patent has an exclusive right to prevent others from exploiting the invention without the patentee’s consent.
Where the invention is a product, exploiting of which means the acts of making, offering for sale, selling, using, or importing that product for the aforementioned purposes.
Where the invention is a process, exploiting of which means the following acts:
1. using the process; and
2. using, offering for sale, selling or importing for these purposes the product obtained directly by that process.
The extent of the protection conferred by an invention patent shall be determined by the claim(s), and the description and drawing(s) may be considered as a reference when interpreting the claim(s).
The abstract shall not be used for the purpose of interpreting claim(s).
Article 59
Limitations of patent right
The effects of an invention patent right shall not extend to the following circumstances:
1. acts done privately and for non-commercial purpose(s);
2. necessary acts to exploit the invention for research or experimental purpose(s);
3. acts done by a person who has been exploiting the invention or making all the necessary preparations for doing such act in this country before the filing date of the invention. However, this provision shall not apply where the person has learned of the invention from the patent applicant for less than twelve (12) months and the patent applicant has made a statement reserving his/her right to a patent being granted;
4. a vehicle merely passing through the territory of this country, or any device of such vehicle;
5. where a patent granted to a person not the owner of the right to apply for a patent is revoked as a result of an invalidation action filed by the patentee, acts done by a licensee who has, prior to invalidation, been exploiting the invention or making all the necessary preparations to do such an act in good faith;
6. where, after the sale of a patented product made by the patentee or made under consent of the patentee, using or reselling such product. The making and selling as stated above are not limited to acts done domestically; and
7. where, after an invention patent is extinguished pursuant to Subparagraph 3, Paragraph 1 of Article 70 and before it is reinstated and published pursuant to Paragraph 2 of Article 70, acts done by a person who has been exploiting the invention or making all the necessary preparations to do such an act in good faith.
The person exploiting the invention as stated in Subparagraphs 3, 5, and 7 of the preceding paragraph, may continue such exploitation within the original business purpose(s).
A licensee as stated in Subparagraph 5 of Paragraph 1, who continues to exploit the invention after the patent is revoked, shall pay the patentee a reasonable royalty from the date of receiving a written notice from the patentee.
Article 60
Limitations of patent right: research and trials of pharmaceuticals
The effects of the patent right shall not extend to research and trials, including their practical requirements, necessary for obtaining registration and market approval of drugs under the Pharmaceutical Affairs Act or obtaining market approval of pharmaceuticals from a foreign country.
Article 60-1
When an applicant of a drug permit makes a declaration in accordance with Item 4 of Article 48-9 of the Pharmaceutical Affairs Act with respect to the patent(s) of the approved new drug listed by the holder of said new drug permit, the patentee of said new drug may, upon receipt of the notification of said declaration, demand to stop or prevent such infringement in accordance of Paragraph 1 of Article 96.
Should the patentee not file a complaint against the aforementioned applicant of said drug permit within the period specified in Paragraph 1 of Article 48-13 of the Pharmaceutical Affairs Act, the applicant may initiate an action for a declaratory judgment to dictate whether the drug for which they applied for a drug permit infringes the patent.
Article 61
Limitations of patent right: dispensation of medicines
The effects of the patent right for the invention of medicines to be manufactured by mixing two or more medicines or for the invention of a process thereof shall not extend to the preparing of medicines in accordance with a prescription from a physician, or the medicines so prepared.
Article 62
Recordation to have locus standi against a third party: transference of patent right
The assigning, entrusting, licensing, or establishing of a pledge on a patent right by the patentee shall have no locus standi against any third party unless it is recorded with the Specific Patent Agency.
The license as stated in the preceding paragraph may be an exclusive license or a non-exclusive license.
An exclusive licensee shall, within the scope of the license granted, exclude the patentee and third parties from exploiting the patented invention.
Where a patentee establishes multiple pledges on the same patent for the purpose of securing multiple creditors’ rights, the ranks of these pledges shall be determined according to the order of their recordation.
Article 63
Sub-licensing
An exclusive licensee may sub-license a third party to exploit the licensed patent unless otherwise agreed upon by contract.
A non-exclusive licensee shall not be allowed to sub-license a third party to exploit the licensed patent without the consent of the invention patentee or the exclusive licensee.
The sub-licensing contract shall have no locus standi against any third party unless it is recorded with the Specific Patent Agency.
Article 64
Disposal of jointly-owned patent right
Where a patent right is jointly owned, except for exploitation by each of the joint owners, it shall not be assigned, entrusted, licensed, pledged, or abandoned without the consent of all the joint owner(s).
Article 65
Disposal of one’s own share of jointly-owned patent right
Where a patent right is jointly owned, no joint owner may assign, entrust or establish a pledge on his/her own share without the consent of all the other joint owner(s).
Where a joint owner of a patent right has abandoned his/her own share, this share shall be vested in other joint owner(s).
Article 66
Prolongation of patent term
Where an invention patentee has suffered loss as a result of a war between ROC and a foreign country, the patentee may request for patent term prolongation for five (5) to ten (10) years; only one such prolongation shall be permitted. However, if the patent is owned by a national from the foreign country in war with ROC, a request therefor shall not be allowed.
Article 67
Post-grant amendment of invention patent
The patentee filing a request for amending the description, claim(s) or drawing(s) of a granted invention patent shall only conduct the following:
1. to delete claim(s);
2. to narrow down the scope of claim(s);
3. to correct errors or translation errors; and
4. to clarify ambiguous statement(s).
Except for correction of translation errors, a post-grant amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.
For a patent application for invention filed by submitting the description, claim(s), and drawing(s) in a foreign language pursuant to Paragraph 3 of Article 25, the correction of translation errors shall not extend beyond the scope of content disclosed in the original foreign language documents as filed.
An post-grant amendment shall not substantially enlarge or alter the scope of the claim(s) as published.
Article 68
Examination of post-grant amendment
The Specific Patent Agency shall designate a patent examiner to conduct examination of post-grant amendment, render a decision and serve it on the patentee, except for a post-grant amendment filed in accordance with Article 77.
After approving the post-grant amendment, the Specific Patent Agency shall publish the examination decision therefor.
Once a description, claim(s) and drawing(s) are amended and published, such post-grant amendment shall take effect retroactively from the filing date.
Article 69
Restriction on abandoning or amending patent right
A patentee shall not abandon the patent right, or apply for a post-grant amendment as stated in Subparagraph 1 or 2, Paragraph 1 of Article 67 without the consent from the licensee(s) or pledgee(s) .
Where a patent right is jointly owned, no joint owner may apply for post-grant amendment as stated in Subparagraph 1 or 2, Paragraph 1 of Article 67 without the consent from all the joint owner(s).
Article 70
Extinguishment of patent right
An invention patent right shall become extinguished under any of the following circumstances:
1. where the patent term has expired, and the patent shall become extinguished;
2. where the patentee has passed away without heirs;
3. where the annuity of the second or any subsequent years is not paid within the payment time period, the patent right shall become extinguished retrospectively after the expiration of the original due date; or
4. where the patentee abandoned the patent, the patent right shall be extinguished from the date the patentee makes a declaration in writing.
The patentee who unintentionally fails to pay a patent annuity within the time period for late payment set forth in Paragraph 1 of Article 94 may apply for reinstatement of the patent rights within one (1) year after the expiration of the time period of late payment by paying triple the amount originally due, whereby the Specific Patent Agency shall publish with respect to the above.
Article 71
Grounds for invalidation against invention patent
Any person may request for an invalidation action against an invention patent with the Specific Patent Agency under any of the following circumstances:
1.where there is a violation of Articles 21 to 24, Article 26, Article 31, Paragraphs 1 and 3 of Article 32, Paragraph 4 and the forepart of Paragraph 6 of Article 34, Paragraph 2 of Article 43, Paragraphs 2 and 3 of Article 44, Paragraphs 2 to 4 of Article 67, or Paragraph 3 of Article 108 of this Act;
2. where the home country of the patentee does not accept the patent applications filed by ROC nationals; or
3. where there is a violation of Paragraph 1 of Article 12, or where the invention patentee is not the owner of the right to apply for an invention patent.
An invalidation action based on Subparagraph 3 of the preceding paragraph shall only be filed by the interested party.
With respect to the ground(s) upon which an invalidation action is based and filed against an invention patent, the provisions in effect at the time of the said patent being approved shall govern. However, if an invalidation action is filed based on the ground(s) under Paragraph 4 and the forepart of Paragraph 6 of Article 34, Paragraph 2 of Article 43, Paragraphs 2 and 4 of Article 67, or Paragraph 3 of Article 108, the provisions in effect at the time of filing the said action shall govern.
Article 72
Invalidation against extinguished patent
Where the interested party possesses recoverable legal interests due to the revocation of a patent, such interested party may file an invalidation action after the said patent has become extinguished ipso facto.
Article 73
Invalidation action
Where an invalidation action is filed, a request form containing a statement and reason(s), along with evidence shall be provided.
Where a patent contains more than one claim, an invalidation action may be filed against parts of the claims.
An invalidation statement shall not be modified or added after filing, but it can be narrowed.
A requester of invalidation action may provide invalidation reasons or evidence within three (3) months after the date of filing the said action.The reason or evidence shall not be examined if the requester fails to provide them within the specified time period.
Article 74
Invalidation proceedings
Upon receipt of a request form for invalidation action stated in the preceding article, the Specific Patent Agency shall serve a copy thereof to the patentee.
The patentee shall provide a response within one (1) month after having been served with a copy of the request form. If the patentee fails to provide such response, the invalidation proceedings shall be conducted accordingly, unless a request for extension containing reason(s) thereof has been approved.
During the invalidation proceedings, the patentee shall only file a request for amending the invention patent when providing a response after having been served with a copy of the request form, or when providing a response or supplementary response after having been served with a notification from the Specific Patent Agency. The above shall not apply if a litigation case involving the invention patent is pending.
The Specific Patent Agency may, when necessary, notify the invalidation requester to submit comments or the patentee to provide a response or a supplementary response. The invalidation requester or patentee shall reply within one (1) month after having been served with the notification. Unless a request for extension thereof has been approved, the comments or response shall not be examined if the requester or patentee fails to submit comments or provide a response within the specified time period.
The Specific Patent Agency may conduct invalidation proceedings accordingly if the comment(s) or the response(s) submitted or provided pursuant to the preceding paragraph is likely to delay the proceedings or if the facts and evidence are sufficiently clear.
Article 75
Principle of ex officio
When conducting invalidation proceedings, the Specific Patent Agency may, by ex officio, examine the reason(s) and evidence not provided by the requester of invalidation action but within the scope of the invalidation statement, and notify the patentee to respond within a specified time period. The invalidation proceedings shall be conducted accordingly if the patentee fails to respond within the time period.
Article 76
Interview and inspection in invalidation proceedings
When conducting invalidation proceedings, the Specific Patent Agency may, upon a request or ex officio, notify the patentee to take any of the following actions within a specified time period:
1. to appear at the Specific Patent Agency for interview; or
2. to conduct necessary experiment(s) or provide 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 77
Consolidated proceedings of invalidation and post-grant amendment
If, during the invalidation proceedings, a request for post-grant amendment is filed, the said proceedings and post-grant amendment shall be consolidated; the decisions concerned shall be jointly rendered as well.
If the Specific Patent Agency considers the said post-grant amendment approvable, it shall serve a copy of the amended description, claim(s) and/or drawing(s) to the requester of invalidation action.The above shall not apply if the post-grant amendment is made only to delete claim(s).
Where there are two or more requests for post-grant amendment filed during the proceedings of same invalidation action, the earlier-filed request(s) for post-grant amendment shall be deemed to have been withdrawn.
Article 78
Consolidated proceedings of multiple invalidation actions
Where there are multiple invalidation actions filed against the same patent, the Specific Patent Agency, when necessary, may consolidate the invalidation proceedings of the said actions.
Where the invalidation proceedings have been consolidated pursuant to the preceding paragraph, decisions concerned may also be rendered jointly.
Article 79
Assignment of a patent examiner for invalidation
When conducting invalidation proceedings, the Specific Patent Agency shall assign a patent examiner to render a decision and serve it to the patentee and the requester of invalidation action.
Decision on an invalidation action shall be rendered on a claim-by-claim basis.
Article 80
Withdrawal of invalidation action
An invalidation action may be withdrawn by the requester before a decision concerned has been rendered. However, if the patentee has already submitted a response, such withdrawal shall be consented by the patentee.
The Specific Patent Agency shall notify the patentee of the withdrawal of an invalidation action. If the patentee raises no objection within ten (10) days after the notice has been served, it shall be deemed that the patentee has consented to such withdrawal.
Article 81
Principle of ne bis in idem
Under any of the following circumstances, any person shall not be allowed to separately file an invalidation action against the same patent based on the same facts and evidence:
1. where another invalidation action has been filed based on the same facts and evidence and considered groundless by a decision; or
2. where new evidence is provided to the Intellectual Property Court pursuant to Article 33 of the Intellectual Property Case Adjudication Act and considered groundless by a judgment.
Article 82
Decision of invalidation action
Where an invalidation action against an invention patent is considered well grounded, the patent right shall be revoked; such revocation may be made on a claim-by-claim basis.
Revocation of an invention patent right shall become final and binding under any of the following circumstances:
1. where no administrative remedy proceedings are filed in accordance with laws; or
2. where administrative remedy proceedings are filed but dismissed finally and bindingly.
Where an invention patent is revoked finally and bindingly, the effect of patent right shall be deemed not to have existed.
Article 83
Procedures to be applied mutatis mutandis to invalidation action against patent term extension
With respect to an invalidation action filed against patent term extension of an invention patent pursuant to Paragraph 1 of Article 57, the provisions in this Act with respect to invalidation actions against invention patents shall apply mutatis mutandis.
Article 84
Publication in the Patent Gazette
An invention patent with respect to grant, change, extension, prolongation, assignment, trust, licensing, compulsory licensing, revocation, extinguishment, pledge establishment , invalidation decisions, as well as other matters that should be published shall be published in the Patent Gazette.
Article 85
Patent Registry
The Specific Patent Agency shall maintain a Patent Registry, in which the patent grants, changes of patent rights, and all other matters required by laws shall be registered.
The Patent Registry set forth in the preceding paragraph may be produced electronically and shall be made available to the public for browsing, transcribing, photographing, or photocopying.
Article 86
Publication by electronic means
Matters which should be laid open and published by the Specific Patent Agency in accordance with this Act may be done electronically; the date for such implementation shall be decided by the Specific Patent Agency.
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