BY ALEX C. H. TSUNG

After taking into account the feedback on the second draft amendment to the Patent Act proposed in June 2021 and considering the latest version of the draft amendment to the Intellectual Property Case Adjudication Act, the Intellectual Property Office in Taiwan (TIPO) recently proposed a third draft amendment to the Patent Act. The major differences between the second draft amendment and the third draft amendment are summarized below.

I. Supportive measures for civil remedies relating to disputes over the ownership of the right to apply for a patent or the patent right

In a dispute over the ownership of the right to apply for a patent or the patent right, the true owner of the right may apply with the court for a provisional injunction or an injunction maintaining a temporary status quo. In this regard, the third draft amendment stipulates that after applying for the aforementioned injunctions, the true owner of the right may request the TIPO to suspend the examination, reviewing or other relevant procedures of the concerned patent application or patent. In consideration of the current court practices, the third draft amendment further stipulates that the period of the suspension is limited to three months. After the expiration of the three-month period, the TIPO shall resume the procedure.

In addition, to ensure that the patent right is not abandoned by the nominal patentee in bad faith before resolution of the dispute, the third draft amendment stipulates that the patentee shall not abandon the patent right before a final and binding judgment is rendered by the court, a mediation settlement is reached or an arbitration proceeding is terminated.

II.  Attorneys in patent invalidation trials

In light of the expertise required for patent litigation, in order to enhance the efficiency of litigation, the third draft amendment stipulates that for a patent invalidation trial, the parties involved and the interveners must appoint lawyers or patent attorneys to conduct acts of litigation. Otherwise, the petition of the patent invalidation trial shall be dismissed due to failure to comply with the formality requirements.

III. Regulations regarding submission of new evidence in patent invalidation trials

Considering the characteristics of patent invalidation trials, in order to enhance the efficiency of remedies, the TIPO removed the regulations regarding submission of new evidence in patent invalidation trials in the second draft. The regulations will be prescribed in the Intellectual Property Case Adjudication Act.

(Translated and summarized from the news announced on the website of the Taiwan Intellectual Property Office, https://www.tipo.gov.tw/tw/cp-86-904977-18f99-1.html)

*Section Chief of International Patent Division at Tai E International Patent & Law Office