07.16.2019
Draft revision of Rule 51 of the Enforcement Rules regarding Fees for Post-Grant Amendments for Utility Model
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BY MENG-HSUEH KU
Rule 5 of the Enforcement Rules of the Patent Act has been revised in response to the upcoming amendments to those parts of the Patent Act that have passed the third reading by the Legislative Yuan on April 16, 2019, were promulgated by Presidential order on May 1, and currently await the date of the implementation to be set by the Executive Yuan.
Specifically speaking, based on the requirements of the currently enforced Rule 5, the fee for making an amendment to a specification, claims or drawings of a Utility Model after grant is NTD 1000, but NTD 2000 is due for making the same amendment if there is a pending invalidation action.
However, in practice, since a post-grant amendment to a Utility Model patent under the currently enforced Article 1082 of the Patent Act merely undergoes a formality examination, a scope of the Utility Model patent might be inappropriately changed after the post-grant amendment. In order to prevent the scope from being inappropriately changed after the post-grant amendment and to protect any third party’s interests3 , the Taiwan Intellectual Property Office (TIPO) will tighten the requirements of Article 108 by performing substantive examination upon request for post-grant amendment regardless whether there is a pending invalidation action.
Due to the above tightening to be applied, the TIPO also revised the requirements of Rule 5 accordingly, from which a Utility Model patentee is required to pay NTD 2000 for each application for post-grant amendment either at his/her request or during a period in which there is a pending Utility Model technical report, a lawsuit or an invalidation action. For clarification, said period concerns the time during which the Utility Model patentee is allowed to request the post-grant amendment and will be in force when the aforementioned upcoming amendments to the currently enforced Article 108 become effective.
[1] Notice to Amend Article 5 and Article 11 of the “Regulations for Patent Fees”
https://www.tipo.gov.tw/ct.asp?xItem=712380&ctNode=7452&mp=1
https://www.tipo.gov.tw/dl.asp?fileName=9721648725.pdf
[2] Patent Act 2017
Enforcement Rules of the Patent Act
[3] Amendments to the Patent Act are promulgated on May 1 by the President Order, and the date of implementation will be determined by the Executive Yuan
https://www.tipo.gov.tw/ct.asp?xItem=707688&ctNode=6687&mp=2
Rule 5 of the Enforcement Rules of the Patent Act has been revised in response to the upcoming amendments to those parts of the Patent Act that have passed the third reading by the Legislative Yuan on April 16, 2019, were promulgated by Presidential order on May 1, and currently await the date of the implementation to be set by the Executive Yuan.
Specifically speaking, based on the requirements of the currently enforced Rule 5, the fee for making an amendment to a specification, claims or drawings of a Utility Model after grant is NTD 1000, but NTD 2000 is due for making the same amendment if there is a pending invalidation action.
However, in practice, since a post-grant amendment to a Utility Model patent under the currently enforced Article 1082 of the Patent Act merely undergoes a formality examination, a scope of the Utility Model patent might be inappropriately changed after the post-grant amendment. In order to prevent the scope from being inappropriately changed after the post-grant amendment and to protect any third party’s interests3 , the Taiwan Intellectual Property Office (TIPO) will tighten the requirements of Article 108 by performing substantive examination upon request for post-grant amendment regardless whether there is a pending invalidation action.
Due to the above tightening to be applied, the TIPO also revised the requirements of Rule 5 accordingly, from which a Utility Model patentee is required to pay NTD 2000 for each application for post-grant amendment either at his/her request or during a period in which there is a pending Utility Model technical report, a lawsuit or an invalidation action. For clarification, said period concerns the time during which the Utility Model patentee is allowed to request the post-grant amendment and will be in force when the aforementioned upcoming amendments to the currently enforced Article 108 become effective.
[1] Notice to Amend Article 5 and Article 11 of the “Regulations for Patent Fees”
https://www.tipo.gov.tw/ct.asp?xItem=712380&ctNode=7452&mp=1
https://www.tipo.gov.tw/dl.asp?fileName=9721648725.pdf
[2] Patent Act 2017
Enforcement Rules of the Patent Act
[3] Amendments to the Patent Act are promulgated on May 1 by the President Order, and the date of implementation will be determined by the Executive Yuan
https://www.tipo.gov.tw/ct.asp?xItem=707688&ctNode=6687&mp=2
