Taiwan IPO’s proposed amendments to Patent Act for joining Trans-Pacific Partnership (TPP)
 (Image source: Alexey Kljatov | CC BY-NC 2.0)  

Taiwan government is considering joining TPP and Taiwan Intellectual Property Office (TIPO) held public hearing for corresponding proposed amendments to Patent Act on April 13, 2016. The major amendments are listed below:
 
 

• Grace Period
  1. Grace period is extended to 12 months for patent applications and 6 months for design (kept the same).
  2. The events for grace period will not be limited to enumerated in current Article 22, but cover all applicant’s disclosure which is similar to that in 35 U.S.C. 102(b)(1)(A).
  3. The events for grace period do not include applicant’s patent publication (including laid-open and issued).
  4. TIPO’s meeting minutes dated April 25, 2016 indicates that the requisite statement for grace period on the filing date might be cancelled.

• Patent Term Adjustment (PTA)
  1. An patentee can file a request for PTA only for invention patent application, but not utility model or design.
  2. The patentee should file a request for patent term adjustment for a patent within THREE months from the issue date if (a) the issue date is later than FIVE years from the filing date of the patent, or (b) the issue date is later than THREE years from the filing of the request for substantive examination; otherwise the patentee loses the right.
  3. The PTA requested by the applicant should not exceed FIVE years.
  4. The following is a figure from TIPO illustrating PTA calculation. Delay contributable to TIPO/ Government Agencies includes re-examination (second substantive examination), but not appeal to the Appeal Board or the Courts.

• Patent Linkage
  1. A patent owner may enforce his/ her patent against an applicant if the applicant files an application to obtain approval to engage in the commercial manufacture, use, or sale of a drug claimed in the patent, or the use of which is claimed in a patent before the expiration of the patent.
  2. The applicant may file a declaratory judgement against the patent if the patent owner does not file compliant against the applicant within specified period in Article 48.12-2.1 of Pharmaceutical Affairs Act.