BY TOMMY C. C. TSAI

The amended Patent Act became effective on November 1, 2019. The following will focus on the amendment to Article 74 of the Patent Act, wherein the provisions governing invalidation proceedings are provided.

According to Paragraphs 1 and 2 of Article 74 of the Patent Act, upon receipt of a request form for invalidation action stated in the preceding article, the Specific Patent Agency shall serve a copy thereof to the patentee. The patentee shall provide a response within one (1) month after having been served with a copy of the request form. If the patentee fails to provide such response, the invalidation proceedings shall be conducted accordingly, unless a request for extension containing reason(s) thereof has been approved.
 

Where comment(s) or response(s) submitted or provided by an invalidation requester is likely to delay the invalidation proceedings or where the facts and evidence are sufficiently clear, the Taiwan Intellectual Property Office may conduct invalidation proceedings accordingly. Hence, in order to effectively manage invalidation proceedings and avoid damaging the rights and interests of both parties due to unnecessary delay, Paragraphs 3 to 5 added into Article 74 of the Patent Act are as follows:
 

During the invalidation proceedings, the patentee shall only file a request for amending the invention patent when providing a response after having been served with a copy of the request form, or when providing a response or supplementary response after having been served with a notification from the Specific Patent Agency. The above shall not apply if a litigation case involving the invention patent is pending (Paragraph 3).
 

The Specific Patent Agency may, when necessary, notify the invalidation requester to submit comments or the patentee to provide a response or a supplementary response. The invalidation requester or patentee shall reply within one (1) month after having been served with the notification. Unless a request for extension thereof has been approved, the comments or response shall not be examined if the requester or patentee fails to submit comments or provide a response within the specified time period (Paragraph 4).
 

The Specific Patent Agency may conduct invalidation proceedings accordingly if the comment(s) or the response(s) submitted or provided pursuant to the preceding paragraph is likely to delay the proceedings or if the facts and evidence are sufficiently clear (Paragraph 5).