BY TOMMY C. C. TSAI

The amended Enforcement Rules of the Patent Act became effective on November 1, 2019. The following will focus on the amendment to Rule 89-1 of the Enforcement Rules of the Patent Act, wherein the provisions on the preservation of patent files are provided.

Considering the huge numbers of patent files and insufficient space for storing such patent files, Article 143 of the Patent Act was amended to limit the permanently stored patent files to those deemed by the Taiwan Intellectual Property Office (TIPO) as files with preservation value. According to Paragraph 1, Article 143 of the amended Patent Act which became effective on November 1, 2019, patent files such as application documents, descriptions, claims, abstracts, drawings and illustrations deemed worth preserving by the TIPO shall be permanently kept. In a corresponding manner, the amendment to Rule 89-1 of the Enforcement Rules of the Patent Act now stipulates that patent files such as application documents, descriptions, claims, abstracts, drawings and illustrations deemed worth preserving by the TIPO as set forth in Paragraph 1, Article 143 of the Act shall refer to any of the following patent cases:
 

1. invention patents requested for compulsory licensing;
2. patents filed by ROC nationals who are Nobel laureates;
3. patents which have been awarded the National Invention and Creation Award;
4. patents for which an invalidation action was filed and an administrative remedy action was filed for the decision;
5. patents for which an opposition was filed an administrative remedy action was filed for the decision;
6. other patents deemed by the TIPO to facilitate technological development of historical significance, economic value, or to have been involved in a major patent litigation case.