The Legislative Yuan passed the draft amendment to the provisions of the Patent Act on April 16, 2019. The draft amendment is summarized hereunder.

(1) Expanding the scope and time limit for requesting division after the allowance of a patent application

The current Patent Act only allows a request for division of an invention patent application to be filed within 30 days after said application having been allowed after preliminary examination. According to the draft amendment, a request for division of an invention patent application can be filed within three months after the notice of allowance is served after preliminary examination or reexamination. This regulation also applies to utility model patent applications.

(2) Enhancing the efficiency of the examination of an invalidation action

In order to avoid the condition where during an invalidation action the petitioner and the patentee continuously file arguments, evidence or corrections and thus delay the examination of the invalidation action, according to the draft amendment the petitioner should file arguments within three months and any arguments filed after the time limit will not be examined and considered. The period for the patentee to file corrections during the examination of the invalidation action is also amended accordingly.

(3) Amending the period for filing corrections to utility model patents and the examination thereof

Since utility model patent applications are not subject to substantive examination, in order to avoid any third party's rights being affected by the changes of the scope of a utility model patent, the timing for filing corrections to utility model patents is amended and such corrections will undergo substantive examination instead of mere formality examination.

(4) Extending the patent term of design patents from 12 years to 15 years

In line with the 15-year patent term of design patents according to the Hague Agreement Concerning the International Deposit of Industrial Designs, and in order to reinforce the protection of design patent rights, the patent term of design patents is extended from 12 years to 15 years, which will promote the development of the design industry in Taiwan.

(5) Solving the problem of shortage of storage space for patent files

According to the current Patent Act, patent files should be permanently preserved. As a result, there currently are more than 2.1 million patent files, and the continuous need for expanding the storage space for patent files is a serious problem. Therefore, consistent with the international norms, the draft amendment allows patent files to be classified and preserved for a certain period, while files having no preservation value are destroyed regularly, thus solving the problem of shortage of storage space for patent files.