03.12.2021
Pending Amendments to Article 731 of the Taiwan Patent Act
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BY MENG-HSUEH KU
l Amendment to Article 73
Currently enforced Article 73 (Invalidation action)
Where an invalidation action is filed, a request form containing a statement and reason(s), along with evidence shall be provided.
Where a patent contains more than one claim, an invalidation action may be filed against parts of the claims.
An invalidation statement shall not be modified or added after filing, but it can be narrowed.
A requester of invalidation action may provide invalidation reasons or evidence within three (3) months after the date of filing the said action. The reason or evidence shall not be examined if the requester fails to provide them within the specified time period.
Pending Amendments to Article 73
Where an invalidation action is filed, a request form containing a statement and reason(s), along with evidence shall be provided; where the evidence is data in a foreign language, a Chinese translation in full or an excerpt thereof shall be provided.
Where a patent contains more than one claim, an invalidation action may be filed against parts of the claims.
An invalidation statement shall not be modified or added after filing, but it can be narrowed.
A requester of invalidation action may provide invalidation reasons or evidence within three (3) months after the date of filing the said action. The reason or evidence shall not be examined if the requester fails to provide them within the specified time period.
The invalidation statement in the preceding Paragraph shall specify the objective to revoke all or parts of the claims; where an invalidation action is initiated against parts of the claims, the claim(s) against which the invalidation action is initiated shall be specifically identified.
The invalidation reasons shall specify the ground(s) asserted by the invalidation action and particular facts, as well as specify the relationship between the respective specific facts and the evidence.
l Objective to amend Article 73
An amendment is made to Paragraph 1 of the currently enforced Article 73. Documents submitted when applying for patents and handling patent-related matters shall be in Chinese language. Thus, it is explicitly provided that where evidence provided by a requester of an invalidation action is in a foreign language, a Chinese translation in full or an excerpt thereof shall be provided and shall conform to the facts and reasons asserted in the invalidation action.
No amendments are made to Paragraphs 2 and 3 of the currently enforced Article 73.
Paragraph 4 is newly added and explicitly provides which matters shall be clearly stated in the invalidation statement. In accordance with Paragraph 1 of the currently enforced Article 73, the invalidation action shall be filed with the request in which the invalidation statement and reason shall be specified, along with providing the evidence. In the invalidation statement, the requester of an invalidation action shall specify the extent of the patent claims to be revoked. Where there are plural claims, the invalidation action may be initiated against parts of the claims, and the claim(s) sought to be revoked by the invalidation action shall be specified to determine the invalidation extent. Such regulation was previously provided in Paragraph 1 of Rule 72 of the Enforcement Rules of the Patent Act and now is incorporated into currently-enforced Article 73 for clarification.
Paragraph 5 is newly added. The requester of an invalidation action shall specify the ground(s) to be asserted and particular facts, and specify the relationship between the facts and the evidence in order to facilitate the progress of an invalidation deliberation, and thus it is explicitly provided in accordance with Paragraph 2 of Rule 72 of the Enforcement Rules of the Patent Act and Paragraph 2 of Article 131 of the Japanese Patent Act. Where the invalidation action enters a procedure of Substantial Deliberation, if the invalidation statement does not specify the ground(s) to be asserted and the relationship between the specific facts and the evidence, the Specific Patent Agent may exercise his power of inquiry to notify the requester of the invalidation action to make corrections for supplement within a time limit
Paragraph 4 in the currently-enforced Article 73 is deleted. Where the requester of an invalidation action initiates the invalidation action, the reasons for the invalidation action shall be specified and the evidence shall be provided in accordance with Paragraph 1 of the currently-enforced Article 73. In the subsequent submission time periods, the aforementioned data may be submitted within a suitable time period before the end of the deliberation in accordance with Paragraph 3 of the amended Article 74 or within the designated time period in accordance with Paragraph 1 of the amended Article 76. The current regulation governing a submission within three (3) months after initiating the invalidation action is accordingly deleted.
1 Notice to Amend Article 73
https://topic.tipo.gov.tw/patents-tw/cp-751-884440-8199b-101.html
https://topic.tipo.gov.tw/patents-tw/dl-276565-9f8c8722bcc14dbb9e035c88fa12e539.html
l Amendment to Article 73
Currently enforced Article 73 (Invalidation action)
Where an invalidation action is filed, a request form containing a statement and reason(s), along with evidence shall be provided.
Where a patent contains more than one claim, an invalidation action may be filed against parts of the claims.
An invalidation statement shall not be modified or added after filing, but it can be narrowed.
A requester of invalidation action may provide invalidation reasons or evidence within three (3) months after the date of filing the said action. The reason or evidence shall not be examined if the requester fails to provide them within the specified time period.
Pending Amendments to Article 73
Where an invalidation action is filed, a request form containing a statement and reason(s), along with evidence shall be provided; where the evidence is data in a foreign language, a Chinese translation in full or an excerpt thereof shall be provided.
Where a patent contains more than one claim, an invalidation action may be filed against parts of the claims.
An invalidation statement shall not be modified or added after filing, but it can be narrowed.
The invalidation statement in the preceding Paragraph shall specify the objective to revoke all or parts of the claims; where an invalidation action is initiated against parts of the claims, the claim(s) against which the invalidation action is initiated shall be specifically identified.
The invalidation reasons shall specify the ground(s) asserted by the invalidation action and particular facts, as well as specify the relationship between the respective specific facts and the evidence.
l Objective to amend Article 73
An amendment is made to Paragraph 1 of the currently enforced Article 73. Documents submitted when applying for patents and handling patent-related matters shall be in Chinese language. Thus, it is explicitly provided that where evidence provided by a requester of an invalidation action is in a foreign language, a Chinese translation in full or an excerpt thereof shall be provided and shall conform to the facts and reasons asserted in the invalidation action.
No amendments are made to Paragraphs 2 and 3 of the currently enforced Article 73.
Paragraph 4 is newly added and explicitly provides which matters shall be clearly stated in the invalidation statement. In accordance with Paragraph 1 of the currently enforced Article 73, the invalidation action shall be filed with the request in which the invalidation statement and reason shall be specified, along with providing the evidence. In the invalidation statement, the requester of an invalidation action shall specify the extent of the patent claims to be revoked. Where there are plural claims, the invalidation action may be initiated against parts of the claims, and the claim(s) sought to be revoked by the invalidation action shall be specified to determine the invalidation extent. Such regulation was previously provided in Paragraph 1 of Rule 72 of the Enforcement Rules of the Patent Act and now is incorporated into currently-enforced Article 73 for clarification.
Paragraph 5 is newly added. The requester of an invalidation action shall specify the ground(s) to be asserted and particular facts, and specify the relationship between the facts and the evidence in order to facilitate the progress of an invalidation deliberation, and thus it is explicitly provided in accordance with Paragraph 2 of Rule 72 of the Enforcement Rules of the Patent Act and Paragraph 2 of Article 131 of the Japanese Patent Act. Where the invalidation action enters a procedure of Substantial Deliberation, if the invalidation statement does not specify the ground(s) to be asserted and the relationship between the specific facts and the evidence, the Specific Patent Agent may exercise his power of inquiry to notify the requester of the invalidation action to make corrections for supplement within a time limit
Paragraph 4 in the currently-enforced Article 73 is deleted. Where the requester of an invalidation action initiates the invalidation action, the reasons for the invalidation action shall be specified and the evidence shall be provided in accordance with Paragraph 1 of the currently-enforced Article 73. In the subsequent submission time periods, the aforementioned data may be submitted within a suitable time period before the end of the deliberation in accordance with Paragraph 3 of the amended Article 74 or within the designated time period in accordance with Paragraph 1 of the amended Article 76. The current regulation governing a submission within three (3) months after initiating the invalidation action is accordingly deleted.
1 Notice to Amend Article 73
https://topic.tipo.gov.tw/patents-tw/cp-751-884440-8199b-101.html
https://topic.tipo.gov.tw/patents-tw/dl-276565-9f8c8722bcc14dbb9e035c88fa12e539.html
