BY MENG-HSUEH KU

l Amendment to Article 59

Currently enforced Article 59 (Limitations of patent right)

The effects of an invention patent right shall not extend to the following circumstances:

1. acts done privately and for non-commercial purpose(s);

2. necessary acts to exploit the invention for research or experimental purpose(s);

3. acts done by a person who has been exploiting the invention or making all the necessary preparations for doing such act in this country before the filing date of the invention. However, this provision shall not apply where the person has learned of the invention from the patent applicant for less than twelve (12) months and the patent applicant has made a statement reserving his/her right to a patent being granted;

4. a vehicle merely passing through the territory of this country, or any device of such vehicle;

5. where a patent granted to a person not the owner of the right to apply for a patent is revoked as a result of an invalidation action filed by the patentee, acts done by a licensee who has, prior to invalidation, been exploiting the invention or making all the necessary preparations to do such an act in good faith;

6. where, after the sale of a patented product made by the patentee or made under consent of the patentee, using or reselling such product. The making and selling as stated above are not limited to acts done domestically; and

7. where, after an invention patent is extinguished pursuant to Subparagraph 3, Paragraph 1 of Article 70 and before it is reinstated and published pursuant to Paragraph 2 of Article 70, acts done by a person who has been exploiting the invention or making all the necessary preparations to do such an act in good faith.

The person exploiting the invention as stated in Subparagraphs 3, 5, and 7 of the preceding paragraph, may continue such exploitation within the original business purpose(s).

A licensee as stated in Subparagraph 5 of Paragraph 1, who continues to exploit the invention after the patent is revoked, shall pay the patentee a reasonable royalty from the date of receiving a written notice from the patentee.

Pending Amendments to Article 59

The effects of an invention patent right shall not extend to the following circumstances:

1. acts done privately and for non-commercial purpose(s);

2. necessary acts to exploit the invention for research or experimental purpose(s);

3. acts done by a person who has been exploiting the invention or making all the necessary preparations for doing such act in this country before the filing date of the invention. However, this provision shall not apply where the person has learned of the invention from the patent applicant for less than twelve (12) months and the patent applicant has made a statement reserving his/her right to a patent being granted;

4. a vehicle merely passing through the territory of this country, or any device of such vehicle;

5. as for a patent granted to a person not the owner of the right to apply for a patent, since a final and binding judgment is rendered by a court as a result of a petition filed by another person, who should be the rightful patentee, in respect of ownership of the patent, acts done by a licensee who has, prior to indictment, been exploiting the invention or making all the necessary preparations to do such an act in good faith;

6. where, after the sale of a patented product made by the patentee or made under consent of the patentee, using or reselling such product. The making and selling as stated above are not limited to acts done domestically; and

7. where, after an invention patent is extinguished pursuant to Subparagraph 3, Paragraph 1 of Article 65-1 and before it is reinstated and published pursuant to Paragraph 2 of Article 65-1, acts done by a person who has been exploiting the invention or making all the necessary preparations to do such an act in good faith.

The person exploiting the invention as stated in Subparagraphs 3, 5, and 7 of the preceding paragraph, may continue such exploitation within the original business purpose(s).

A licensee as stated in Subparagraph 5 of Paragraph 1, who continues to exploit the invention after a judgement ruling the ownership of the patent is rendered, shall pay the patentee a reasonable royalty from the date of receiving a written notice from the patentee.

l Objective to amend Article 59

Amendments are made to Paragraphs 1 and 3 of the currently enforced Article 59.

(a) In coordination with the cancellation of the grounds for invalidation of invention patent rights in Subparagraph 3, Paragraph 1 of Article 71, a petition for disputes over patent rights should be sought in civil litigation. Since a final and binding judgment is rendered by a court as a result of a petition filed by another person, who should be the rightful patentee, in respect of ownership of the patent right, for a licensee who has, prior to indictment, been exploiting the invention or making all of the necessary preparations in good faith, it shall be deemed appropriate to grant protection for the rights of the licensee, and the text concerned in Subparagraph 5 is to be revised.

(b) Amendments are made in compliance with changes to the sequence number of the regulation cited in Subparagraph 7, Paragraph 1 of the currently enforced Article 59.

(c) In coordination with the amendments to Subparagraph 5, Paragraph 1 of this Article, it is explicitly provided that after the court rules that the ownership of the patent right is changed, those who still exploit the patent shall pay the patentee reasonable royalties, and the text concerned in Paragraph 3 is to be revised.

No amendment is made to Paragraph 2 of the currently enforced Article 59.

¹ Notice to Amend Article 59
https://topic.tipo.gov.tw/patents-tw/cp-751-884440-8199b-101.html
https://topic.tipo.gov.tw/patents-tw/dl-276565-9f8c8722bcc14dbb9e035c88fa12e539.html