BY MENG-HSUEH KU

Amendment
Currently enforced Article 19 (E-filing)

Application for patent and other relevant proceedings may be processed electronically; the implementation of which shall be prescribed by the competent authority

Pending Amendment to Article 19

Application for patent and other relevant proceedings may be processed electronically; the same shall be applied in the case of serving of documents by the Specific Patent Agency

The implementation with respect to the scope for application, effect, operation proceedings and other compliance matters in relation to “processed electronically” set forth in the preceding paragraph shall be prescribed by the Competent Authority

Grant, change, post-grant amendment, extension, prolongation (patent term extension), assignment, trust, licensing, compulsory licensing, revocation, extinguishment, pledge establishment, invalidation determinations and other matters that should be published with respect to a patent right shall be published in the Patent Gazette.

The Specific Patent Agency shall maintain a Patent Registry, in which grants of patents, changes of patent rights, and all other matters stipulated by laws shall be registered.

Matters which should be laid open and published by the Specific Patent Agency in accordance with this Act and the Patent Registry may be produced electronically; and shall be made available to the public for browsing, transcribing, photographing, or photocopying.

Objective
The first paragraph is amended. With the progress of technology, electronic delivery of documents has become widely accepted. Although the current Article stipulates that patent applications and other proceedings may be performed electronically, regulations for the Specific Patent Agency to electronically serve documents have not been clearly defined. Taking into consideration the currently enforced “Implementation for Patent Electronic Application and Electronic Serving” that comprehensively prescribes regulations for serving of documents, the text concerned is to be revised in order to comply with the principle of legal certainty of administrative acts.

The second paragraph of the pending amendment to Article 19 is amended and moved from the last sentence of the currently enforced Article 19². With respect to the scope for application, effect, operation proceedings and other compliance matters in relation to the “processed electronically” set forth in the preceding paragraph, the Competent Authority is authorized to prescribe the implementation.

The third paragraph of the pending amendment to Article 19 is amended and moved from the currently enforced Article 84³. The main points of this amendment are as follows:

(a) In coordination with the incorporation of the regulation governing that the patent right shall be published in the Patent Gazette into the General Principles, the wording “invention” is deleted.

(b) A “post-grant amendment” belongs to a matter for publication in the Patent Gazette and thus is added.

(c) In coordination with the introduction of review and dispute trial systems, the “prosecution of preliminary examination cases (初審案之審查)” is distinguished from the “trial of review cases and dispute cases (複審案及爭議案之審議)”, and terms for administrative dispositions are adjusted. The former is referred to as an “examination decision (審定)” and the latter is referred to as a “determination (決定)”

The fourth paragraph of the pending amendment to Article 19 is moved from the first paragraph of the currently enforced Article 85⁴.

The fifth paragraph of the pending amendment to Article 19 is moved from the second paragraph of the currently enforced Article 85⁵ and the currently enforced Article 86 in combination. The Specific Patent Agency began to simultaneously issue electronic versions of the patent gazettes since June 2001 and to simultaneously electronic versions of the laid-open gazettes electronically since May 2003. The above-mentioned “patent gazettes” and “laid-open gazettes” are fully digitalized since January 1, 2013, and printed versions are no longer issued. In this regard, it is unnecessary for the Specific Patent Agency to clarify the date for implementation to be enacted, and thus the last sentence of Article 86 is deleted.

¹ Notice to Amend Article 19
https://topic.tipo.gov.tw/patents-tw/cp-751-884440-8199b-101.html
https://topic.tipo.gov.tw/patents-tw/dl-276565-9f8c8722bcc14dbb9e035c88fa12e539.html
² Patent Act 2019: https://www.tipo.gov.tw/en/dl-125160-e1872caf01df4cbb89dbe8109894d3e0.html
³ Patent Act 2019: https://www.tipo.gov.tw/en/dl-125160-e1872caf01df4cbb89dbe8109894d3e0.html
⁴ Patent Act 2019: https://www.tipo.gov.tw/en/dl-125160-e1872caf01df4cbb89dbe8109894d3e0.html
⁵ Patent Act 2019: https://www.tipo.gov.tw/en/dl-125160-e1872caf01df4cbb89dbe8109894d3e0.html