12 years ago

On January 1, 2013 new provisions will come into force in the Taiwan Patent Law. This article reviews some of the more substantial changes in the law.

Under the new provisions, the time for filing divisional applications is extended (Article 34) so that a divisional application can be filed after a notification of allowance of the patent application is issued by the Taiwan Intellectual Property Office.

Formerly, the receipt of the notice of the allowance of the application had the effect of immediately extinguishing the right to file a divisional patent application. Now, it will be possible to file a divisional patent application within 30 days of receiving the grant notification. The divisional application in such case must be filed with new claims - it is not possible to delete any of the allowed claims and to then insert them in the further divisional application.

Voluntary amendments can now be filed any time before the first Office Action is issued by the TIPO. After a final Office Action is received, the only possible amendments are those deleting claims, narrowing claims, correcting errors and clarifying disclosure in the application.

As a further streamlining feature of the new law, inventor assignments will no longer be required for any Taiwan patent applications filed on or after January 1, 2013.

The new law also permits late payment of sealing fees and annuities, with a six month grace period being allowed for payment of the sealing fee and first year annuity, with a surcharge of 20% per month during the grace period, up to a maximum of 100% of the amount of the first year annuity. An additional 1 year is allowed for late payment of the second and subsequent annuities after the six month grace period, with a surcharge equal to 200% of the annuity.

Invalidation actions after January 1, 2013 will permit challenge of only some of the claims in the patent, rather than all of the claims under the prior procedure.

Further, Article 39 of the new law provides that after a patent application is published, and before the application is allowed, anyone can file arguments and prior art against the claims.

Steven J. Hultquist

November 7, 2012