BY TOMMY C. C. TSAI

The Taiwan Intellectual Property Office (TIPO) published the Amendment Draft to the Patent Act on May 17, 2018 and held two public hearings regarding said Amendment Draft on December 21, 2017 and January 15, 2018, respectively. However, the Amendment Draft has not been passed yet. The following text will focus on the Amendment Draft to Article 118 of the Patent Act, wherein the provisions on post-grant amendments for a utility model patent are to be amended.

Under the current Patent Act, after a utility model patent application has matured into an issued patent, the patentee may file a request for post-grant amendment for the utility model patent. In this regard, if no invalidation action is filed against the utility model patent, the TIPO conducts a formal examination of the post-grant amendment. On the other hand, during invalidation proceedings, said proceedings and post-grant amendment shall be consolidated and the post-grant amendment will be subject to substantive examination. Besides, it is worth mentioning that the current Patent Act does not specify the time when post-grant amendment is permissible.

The Amendment Draft now proposes that a request for post-grant amendment can be filed only at the following stages: (1) an invalidation action has been filed against the utility model patent and is pending; (2) a request with the TIPO for a technical evaluation report of utility model patent has been filed but the report has not been issued yet; and (3) a patent infringement lawsuit based on the utility model patent is pending in court. Further, in the future, the TIPO will conduct substantive examination for post-grant amendment of a utility model patent no matter whether an invalidation action is filed against the utility model patent.

In order to determine the validity of a utility model patent and avoid problems arising from the change of the content of the same, it should be considered that in case of a dispute arising from whether the utility model patent meets the statutory requirements for patentability, conducting substantive examination for post-grant amendment of the utility model patent is more appropriate than formal examination.