This is the most noteworthy amendment to the ROC Patent Act in many years. There are a total of thirteen key points of amendment, as listed in the press release below.
In this amendment, the most gratifying point might be that the draft proposed by the Executive Yuan to fully open patents for animals and plants was not included in the scope of the amendment, thanks to the persistence of domestic professionals and the Council of Agriculture (although the government has not given up and intends to propose it again in the future once a consensus is reached based on industry needs).
At the same time, the name “New Design Patent” (新式樣專利) has been changed to “Design Patent” (設計專利) to align with international trends. The term “Patent Implementation” has also been rectified to “Compulsory Licensing.” While these two changes do not alter the essence of the law, they conform to current usage trends—simply put, it’s a move toward more plain language.
Press Release Highlights:
…This Patent Act amendment is a comprehensive revision, with a total of 159 articles passed (108 amended, 36 added, 15 deleted). The implementation date will be determined by the Executive Yuan, expected one year after publication…
- Added a provision that applicants who publish in journals of their own volition can also claim a grace period.
- Added a mechanism for restoring rights if priority was not claimed at the time of application due to non-intentional reasons, or if rights were lost due to failure to pay certificate or annual fees on time.
- Independent the scope of patent claims and the abstract from the specification.
- Removed the time limit for applicants to actively apply for amendments and relaxed the provision for the division of invention patent applications within 30 days after the initial approval.
- Added and amended matters to which the patent right does not extend, such as non-disclosed acts for non-commercial purposes, research and testing for the purpose of obtaining domestic or foreign drug marketing authorization, and clearly adopting the principle of international exhaustion.
- Amended the provisions for extending the patent term of medicinal or agrochemical products.
- Amended the reasons, procedures, and provisions for simultaneous determination of compensation for compulsory licensing.
- Added a provision for applying for compulsory licensing to manufacture and export drugs to countries in need to assist in solving public health problems in developing and least-developed countries.
- Amended the patent invalidation system, such as abolishing ex-officio review, allowing invalidation of partial claims, and combined review of invalidation and correction cases.
- Defined the subjective requirements for patent infringement damages and amended the calculation method for damages and patent marking provisions.
- Added a provision for the same person to apply for an invention patent and a utility model patent on the same day. When the Intellectual Property Office deems an invention patent grantable, it will notify the applicant to choose one. If the applicant chooses the invention patent, the utility model patent right is considered non-existent from the beginning.
- Opened partial designs, computer icons, and Graphical User Interface (Icons & GUI) designs, and design of sets of articles, and added a derivative design system.
Among the articles above, 1 to 4 are amendments for the protection of inventors’ rights; 5 to 8 are new regulations amended for the emerging biotechnology industry (regarding compulsory licensing, I believe these amendments have been brewing since the SARS period).
The amendment that deeply affects programmers and image designers is Article 12: “Opening partial designs, computer icons, and Graphical User Interface (Icons & GUI) designs, and design of sets of articles, and added a derivative design system.” This article stipulates that applicants can apply for design patents for “icon design and user interface.”
This can be traced back as far as 1996, when the United States Patent and Trademark Office (USPTO) published examination standards for “Computer-Generated Icons,” specifying that applicants could apply for design patents for icons, GUIs, and computer typefonts.
Traditional ROC “New Design Patents” explicitly stated that the target for protection was “…the shape, pattern, color, or a combination of two or three of the aforementioned to enhance product competitiveness and visual effect.” As for computer graphics, they were mostly only protected by copyright.
This amendment adds computer-generated images (static or dynamic) to the original articles, allowing us to better protect our wisdom and creations through the patent application system.