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04.11.2011
The Economic Committee of the Legislative Yuan Passed the Amendment Bill of the Patent Act

After four scrutinizing meetings, the Economic Committee of the Legislative Yuan finally completed the entire process of the amendment bill of the Patent Act on April 6, 2011. During the examining process, Articles 28 and 29 of the amendment bill were published in advance in order to cooperate with the endorsement of "Cross-Strait Cooperation on the Protection of Intellectual Property Rights Agreement ".

Nevertheless, the final version of these two articles has slight differences in the wording from the published version and needs further discussions among the committee members. Except Articles 28 and 29, the rest of the bill has passed the inspection.

The primary concerns of this scrutinizing process include design patent protection of arts and crafts, the scope of allowing farmers to keep seeds for self use, and agricultural policies in response to the allowance of plant patents, etc. The Intellectual Property Office (TIPO) will actively arrange corresponding measures with the Council of Agriculture of the Executive Yuan.

The main goals of this amendment bill are:

1. to open animals and plants to be patenable subject matter, to add corresponding regulatory measures for safe harbor for farmers to keep seeds for self use, patent rights exhuastion, and compulsory cross licensing of plant patents.
2. to add mechanisms for recovery of rights in cases where applicants unpurposely fail to claim priority when filing or applicants lose their rights due to overdue patent annunities.
3. to delete the limitation on the timing of voluntary amendment, and to relax the conditions upon which an invention patent application can be applied for division within 30 days after approval of preliminary examination.
4. to amend the related regulations of patent term extension of invention patents directed to pharmaceutical(s), agrochemical(s) or processes for preparing the same.
5. to add and amend matters not covered by patent rights, such as unpublished behaviors for purposes other than business, behaviors necessary for obtaining a government approval for marketing the patented medicine, and to explicitly adopt the principle of international exhaustion, etc.
6. to amend the reasons for compulsory licensing and the decision-making regulations of the Patent Authority on a disputed compensation amount of a compulsory licensing.
7. to amend the regulatory system of patent invalidation, such as to abolish the process of examining a patent invalidation action ex officio, to file an invalidation action directed to parts of the claims of the patent in issue, and to combine an invalidation action with a correction action of a patent for examination and approval issuance, etc.
8. to explicate the subjective elements of patent infringement, and to amend methods of calculating damages and regulations of patent labeling.
9. to add the regulation of situations in which an applicant applies for an invention patent and a utility model patent on the same day, and to explicate policy of the formality examination on corrections of utility model patents.
10. to allow partial designs, computer image and graphical user interface (Icons & GUI) designs, and designs on group of items as patentable subject matter, and to add generative design system.

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