Chapter 2
Invention Patent
Section
1: Patentability of inventions
Article 21
The term "invention" as used herein refers to any creation of
technical concepts by utilizing the rules of nature.
Article 22
An invention which is industrially applicable and is free from
any of the following conditions may obtain a patent therefore upon
application in accordance with this Act:
1. Which, prior to applying for patent, has been published or put to
public use;
or
2. Which, prior to applying for patent, has become known to the
public.
Where an invention is under either of the circumstances set forth
in the
preceding Paragraph due to any of the following causes, and a
patent
application has been filed within six months from the date of
occurrence of
fact of the foregoing causes, such invention shall be free from the
restrictive
conditions set forth in the preceding Paragraph:
1. Where the invention is created as a result of research or
experiment;
2. Where the invention has been exhibited at an exhibition sponsored
or
approved by the government; or
3. Where the invention has been disclosed in an occasion not
intended by the
patent applicant.
An applicant claiming the application of the cause set forth in Item
1 or Item 2 of the preceding Paragraph shall indicate the facts and
the relevant dates in his/her application and submit evidential
documents within the time limit specified by the Patent Authority.
Notwithstanding the absence of the conditions set forth in Paragraph
One of this Article, if the proposed invention can be easily
accomplished by a person having ordinarily knowledge in the art
based on prior art before the application for patent is filed, no
invention patent should be granted for such invention under this
act.
Article 23
Where the contents of an invention claimed in a patent
application are identical to the contents described in the
specification or drawings submitted along with an application for
invention or utility model patent that is filed prior to but
laid-open or published after the filing of the present patent
application, no invention patent may be granted to the invention,
except that the applicant(s) of the present application is (are) the
same applicant(s) of such prior invention or utility model patent
application.
Article 24
The following items shall not be granted an invention patent:
1. Animals, plants, and essentially biological processes for
production of animals
or plants, except the processes for producing microorganisms;
2. Diagnostic, therapeutic or surgical operation methods for the
treatment of
humans or animals;
3. An invention which is contrary to public order, morality or
public health.
Section 2: Application
Article 25
The application for an invention patent shall be made by the person
entitled to file the patent application by submitting to the Patent
Authority a application, a specification, and necessary drawings.
Where the person entitled to file a patent application is an
employer, assignee or heir, the name of the inventor shall be
indicated in the application, and the document evidencing the
employment, assignment or inheritance shall be submitted along with
the application.
The filing date of the invention patent application shall be the day
which the application, the specification and necessary drawings are
fully submitted.
Where the specification and all necessary drawings submitted under
the preceding Paragraph are written in a foreign language, and the
Chinese translation thereof has been supplemented prior to date
specified by the Patent Authority, the date on which the foreign
language version of such documents are submitted shall be regarded
as the filing date of such patent application. Failure to submit the
Chinese translation thereof by or on the specified date shall cause
the patent application to be dismissed provided, however, that if
the Chinese translation has been supplemented prior to the execution
of the dismissal, the date on which the Chinese translation is
submitted shall be regarded as the filing date.
Article 26
The specification referred to in the preceding Article shall contain
the title of invention, description of invention, abstract of
invention, and scope of claims.
The description of invention shall contain a sufficiently clear and
complete disclosure of contents of the invention so as to enable
person skilled in the art to understand the contents of and to
practice said invention.
The scope of claims shall indicate distinctly the invention for
which the patent is claimed. Each claim shall be written in a
concise manner and must be supported by the descriptions and
drawings of the invention.
The manner for disclosing the description, the claims and the
drawings of an invention shall be prescribed in the implementing
Regulations of the Patent Act.
Article 27
A patent applicant, who has filed his/her first patent application
legally in respect of an invention in a member of the World Trade
Organization (hereinafter referred to as the "WTO") or in a foreign
country which allows ROC nationals to claim priority based on
reciprocity and has filed his/her patent application for the same
invention in the ROC within twelve (12) months from the filing date
of his/her first patent application in said foreign country, may
claim a priority for his/her ROC application.
Subject to the provisions of the preceding Paragraph, in case an
applicant claims for two or more priority rights in a single patent
application, the beginning date for calculation the priority period
shall be the day following the earliest priority date.
If the foreign applicant is a citizen of a non-member country of the
WTO and his/her home country does not maintain a relation for mutual
recognition of priority rights with the ROC but the applicant has a
residence or business office in a member country of the WTO or in
the territory of a reciprocal country, the applicant shall also be
entitled to claim priority in accordance with the provisions set
forth in Paragraph One of this Article.
For a patent application claiming priority, the priority date shall
be used as the reference date in the examination of the patent
requirements.
Article 28
An applicant claiming priority in accordance with the preceding
Article shall, when applying for patent, simultaneously file a
statement and declare in the written application the filing date and
the application number of the corresponding foreign application as
well as the foreign country in which the same application was filed.
The applicant shall, within four (4) months from the filing date,
submit the documents issued by the government of the foreign country
declared in the preceding Paragraph evidencing the acceptance of
said foreign application.
Violation of the provisions set forth in the preceding two
Paragraphs shall cause the deprivation of the priority right.
Article 29
Where an applicant files a further application based on a prior
invention application or utility model application filed by
himself/herself in the ROC, he/she may claim for the priority right
in respect of the invention or creation described in the
specification or drawings submitted along with his/her prior patent
application, except under the following circumstances:
1. Where a period of twelve (12) months has elapsed from the filing
date of the
prior patent application;
2. Where a claim for priority right has been made in accordance with
the
provisions of Article 27 or this Article in respect of the
invention or creation
described in the prior patent application;
3. Where the prior patent application has been divided into a
divisional
application in accordance with the provisions of Paragraph
One, Article 33,
or has been converted in accordance with the provisions of
Article 102;
4. Where the examination decision has been made in respect of the
prior patent
application.
The prior patent application referred to in the preceding Paragraph
shall be deemed having been withdrawn after 15 months from its
filing date.
A priority claim in respect of a prior patent application may not be
withdrawn after 15 months from the filing date of the prior
application.
Where a later application filed with priority claim in accordance
with Paragraph One of this Article is withdrawn within fifteen (15)
months from the filing date of the prior application, the priority
claim shall be deemed withdrawn at the same time.
Where an applicant claims two or more priority rights in a single
application, the beginning date for calculation of the priority
period shall be the day following the first priority date.
For a patent application claiming priority, the priority date shall
be used as the reference date during the patentability examination.
A statement for claiming priority in accordance with Paragraph One
under this Article shall be filed concurrently while filing a patent
application, and the filing date and the application number of such
prior patent application shall be indicated in the application.
Failure of the applicant to file the statement or to indicate the
filing date and the application number of the prior patent
application shall cause the deprivation of priority.
The claimed priority date under this Article shall not be earlier
than October 26, 2001.
Article 30
In applying for an invention patent involving any biological
material or the utilization of any biological material, the
applicant shall, no later than the filing date, deposit the
biological material at a local deposit institute designated by the
Patent Authority and shall indicate in the application the name of
the deposit institute, and the date and the serial number of such
deposit provided, however, that the deposit is not required if the
biological material involved can be easily obtained by ordinarily
skilled person in the relevant art to the biological material.
The applicant shall, within three (3) months from the filing date of
the application, submit to the Patent Authority the document(s)
evidencing the deposit. If such evidentiary documents are not
submitted before the foregoing period , the deposit shall be deemed
not having been effected.
In the event the biological material involved has been deposited,
before filing the patent application, at a foreign deposit
institution which is recognized by the Patent Authority and the fact
of such deposit has been stated in the application, and the deposit
certificates issued by both a designated local deposit institution
and the foreign deposit institution have been submitted within the
time limit specified in the preceding Paragraph, the requirement for
deposit before filing the application as set forth in Paragraph One
of this Article may be exempted.
Regulations governing the accepting conditions, the categories, the
types, and the quantity of such biological materials to be
deposited, the rates of the deposit fees, and other matters in
connection with the depositing operation shall be prescribed by the
Competent Authority.
Article 31
When two or more applications are filed for the same invention, only
the application filed first may be granted an invention patent,
except in the case where the priority date claimed by the later
application is earlier than the filing date of the earlier
application.
If the filing date and the priority date referred to in the
preceding Paragraph are the same date, the applicants shall be
requested to reach a compromise between themselves. If such
compromise cannot be reached, none of the applicants shall be
granted an invention patent. In case the applications are filed by
the same applicant, the applicant shall be requested, by a notice,
to select one of such applications for filing within a given time
limit; and failure of the applicant to select within the time limit
shall cause the dismissal of all such applications.
While the applicants involved are in the process of negotiating for
a compromise, the Patent Authority may notify such applicants to
submit the results of the negotiation within an appropriate period
of time to be set by the Patent Authority. Failure to submit the
negotiation results within the time limit shall be deemed a failure
of negotiation.
Where an invention patent application and a utility model patent
application are filed separately in respect of the same invention or
creation, the provisions set forth in the preceding three (3)
Paragraphs shall apply mutatis mutandis.
Article 32
An application for a patent for invention shall be limited to one
invention.
Two or more inventions belonging to a single general inventive
concept may be filed as one application.
Article 33
In the case of a patent application which substantially involves two
or more inventions, the application may, upon notice given by the
Patent Authority or the request by the applicant, be divided into
two or more separate divisional applications.
The divisional applications set forth in the preceding Paragraph
shall be filed before the re-examination decision on the original
application is rendered. If divisional applications are accepted,
the filing date of the original application shall still be taken as
the filing date of the divisional applications, and the applicant
shall remain entitled to claim priority, if any, and the Patent
Authority shall proceed with the examination procedures left
unfinished in the examination of the original application.
Article 34
When an invention patent is granted upon application filed by a
person other than the person entitled to file such application, the
filing date of the application filed by the person not entitled to
file the application shall be taken as the filing date of the
application filed by the person entitled to file the application, if
the person entitled to file the patent application files an
invalidation action against the patent application filed by the
person not entitled to file the application within two (2) years
from the publication date of the patent application in question, and
files his/her own patent application within sixty (60) days from the
day the invalidation decision becomes irrevocable.
No publication will be given in respect of the application filed in
accordance with the provisions set forth in the preceding Paragraph
by the person entitled to file the invention patent application.
Section 3: Examination and Re-examination
Article 35
The Patent Authority shall designate patent examiner(s) to conduct
substantive examination on an invention patent application.
The qualification of patent examiners shall be prescribed by a
separate act.
Article 36
After receipt of the documents of an invention patent
application, if the Patent Authority considers, through examination,
that nothing is contrary to the formality requirements and should
not be laid-open, the Patent Authority shall have such application
laid-open after a period of eighteen (18) months from the filing
date of such patent application.
The Patent Authority may advance the laying-open of a patent
application at the request of the applicant.
Under any of the following circumstances, an invention patent
application shall not be laid-open:
1. Where the patent application has been withdrawn within fifteen
(15) months
from the filing date of said application;
2. Where the contents of the invention involve the national defense
secret or
any other secret pertaining to national security; or
3. Where the contents of the invention are detrimental to morality
or public
health.
The period set forth in Paragraph One and the preceding Paragraph of
this Article, if any priority is claimed, is calculated from the day
following the priority date, or following the earliest priority date
if two or more priority are claimed.
Article 37
Any person may, within three (3) years from the filing date of
an invention patent application, apply to the Patent Authority for a
substantive examination.
If the divisional application under Paragraph One, Article 33 is
filed, or an invention patent application is converted under Article
102, after the time frame set forth in the preceding Paragraph, the
application for substantive examination may be filed within thirty
(30) days from the filing date of the divisional applications or the
filing date of the conversion application.
No substantive examination application filed under the preceding two
Paragraphs may be withdrawn.
If substantive examination is not applied within the period
specified in Paragraph One or Paragraph Two of this Article, the
invention patent application shall be deemed withdrawn.
Article 38
When applying for substantive examination under the preceding
Article, a application shall be submitted.
The Patent Authority shall post the fact of an application for
substantive examination in the Patent Gazette.
Where the substantive examination application is filed by a person
other than the applicant of the invention patent application
concerned, the Patent Authority shall inform the applicant of said
invention patent application of such fact.
Where a substantive examination application is filed by the
applicant of an invention patent application pertaining to a
biological material or a method for utilizing any biological
material, a certificate of viability issued by the deposit
institution concerned shall be submitted along with the application;
whereas, if such substantive examination application is filed by a
person other than the applicant of the invention patent application,
the Patent Authority shall notify the applicant of the invention
patent application to submit such a certificate of viability within
three (3) months.
Article 39
After an invention patent application is laid-open, if any
person other than the applicant of the invention patent application
puts such invention to practice for commercial purposes, the Patent
Authority may effect the examination on a priority basis upon
application.
For filing the application under the preceding Paragraph, relevant
evidential documents shall be submitted along with the application.
Article 40
Where a person has received a written notification of the contents
of an invention patent application from the applicant thereof after
laying-open of such patent application and continues to put the
invention to practice for commercial purpose in the interim after
such notification and prior to the publication, the applicant of the
invention patent application may, after the publication of his/her
invention patent application, make a claim against said person for
an appropriate pecuniary compensation.
The claim referred to in the preceding Paragraph may also be made
against a person who knows that an invention patent application has
been laid-open but still continues to put the invention to practice
for commercial purpose prior to the publication of the application.
The right to claim provided for in the preceding two Paragraphs
shall have no prejudice to the exercise of any other rights.
The right to claim for pecuniary compensation set forth in Paragraph
One and Paragraph Two of this Article shall become extinguished if
not exercised within two years from the date of publication of said
invention patent application.
Article 41The provisions of the preceding five Articles shall be
applicable only to the invention patent applications filed on or
after October 26, 2002.
Article 42
Under any of the following circumstances, a patent examiner shall
exclude from exercising his/her own initiative:
1. Where the patent examiner or his/her spouse is the patent
applicant, or the
patent attorney, or a partner of the patent attorney or a
person having an
employment relation with the patent attorney of the applicant
of the patent
to be examined;
2. Where the patent examiner is presently related to the patent
applicant or
the patent attorney of the patent application to be examined
by
consanguinity within the fourth degree or by affinity within
the third degree;
3. Where the patent examiner or his/her spouse has the relation with
the
patent applicant as a joint obligee, joint obligor or
debt-paying obligor in
respect of the patent application to be examined;
4. Where the examiner is or was the statutory representative, the
head or a
member of the family of the applicant of the patent
application to be
examined;
5. Where the examiner is or was an attorney ad litem or assistant in
litigation of
the applicant of the patent application to be examined; or
6. Where the examiner is or was a witness, or an expert witness, or
an
opposition petitioner, or an invalidation petitioner of the
present patent
application.
Where an examiner should but did not withdraw from exercising
his/her function, the Patent Authority may, ex officio or at
request, revoke the measure he/she took and take another appropriate
measure instead.
Article 43
Upon completion of examination of a patent application, a
written decision shall be rendered and issued to the applicant or
his/her patent attorney.
When a patent application is found not patentable, the reasons
therefore shall be given in the written decision of examination.
A written decision of examination shall bear the name of the patent
examiner(s). This requirement shall also apply to any written
decision of re-examination, opposition action, invalidation action
and patent-term extension.
Article 44
Any invention patent application which is found to be contrary
to the provisions set out in Articles 21 through 24; Article 26;
Paragraph One, or Paragraph Two, Article 30; Article 31; Article 32;
or Paragraph Four, Article 49 of this Act shall not be patented.
Article 45
Where the examination result reveals no reason to deny the
patentability of an invention, such invention shall be patented, and
the claims and the drawings disclosed in that patent application
shall be published.
Any person may apply for access to the written decision of
examination, specification, drawings, and the entire file and
information in connection with a specific patent application which
has been allowed and published so as to read or to make hand,
photographic or reproduced copy of the relevant information thereof,
except for the information which should be kept confidential by the
Patent Authority in accordance with the act.
Article 46
In case of dissatisfaction with a rejection decision rendered
for an invention patent application, the applicant may, within sixty
(60) days from the date the rejection decision is served, apply for
re-examination by submitting a statement of reasons. If the
application is rejected on procedural grounds or on the ground of
the ineligibility of the applicant, the applicant may directly
appeal for an administrative remedy in accordance with the act.
If there is any reason to deny the patentability of an invention
patent through the re-examination procedure, the Patent Authority
shall, before rendering a re-examination decision, send to the
applicant a notice requesting that a response be made within a
specified time limit.
Article 47
For re-examination, the Patent Authority shall designate an
examiner who has not participated in the examination of the original
patent application to conduct the re-examination and render a
written decision.
The written re-examination decision shall be served to the
applicant.
Article 48
When examining an invention patent application, the Patent
Authority may, ex officio or at a request, notify the patent
applicant to do any of the following acts within a specified time
limit:
1. To appear before the Patent Authority for an interview; or
2. To perform necessary experiment(s) or to supplement model(s) or
sample(s).
The Patent Authority may, when necessary, visit the site or a
designated
place for inspection and observation of the experiments or
models or
samples as required under Item 2 of the preceding Paragraph.
Article 49
In the course of examining an invention patent application, the
Patent Authority may, ex officio, notify a patent applicant to make
a supplement or amendment to the specifications and/or drawings
within a specified time limit.
A patent applicant may, within fifteen (15) months from the filing
date of such patent application, make a supplement or amendment to
the specifications and/or drawings. If the supplement or amendment
to the specifications and/or drawings is filed after elapse of the
fifteen (15) months, the application shall be laid-open as it was
originally filed.
After fifteen (15) months from the filing date of the invention
patent application, a patent applicant may make a supplement or
amendment to the specification and/or drawings only on the dates or
during the periods as specified below:
1. At the same time of filing an application for substantive
examination;
2. Within three (3) months from the service date of a notice of
substantive
examination issued in respect of the patent application
concerned, if the
substantive examination application is filed by a person
other than the
patent applicant;
3. During the time limit for response as specified in a notice given
by the Patent
Authority prior to its written reasons for rejection of the
patent application
concerned; or
4. At the time of filing an application for re-examination, or
during the period
fixed for filing a supplemental statement of reasons for
re-examination.
The contents of the supplement or amendment made under the preceding
three Paragraphs shall not exceed the scope of the specification or
drawing disclosed in the original patent application.
Where a claiming priority is made, the periods specified in
Paragraph Two and Paragraph Three under this Article shall be
calculated from the day following the priority date.
Article 50
Where an invention is considered, in the process of examination,
to be likely to affect the national security, the specification of
such invention shall be referred to the Ministry of National Defense
or the relevant national security authorities for their opinions. If
it is deemed necessary to keep such invention confidential, the
invention shall not be published, and the documents included in the
patent application package shall be sealed and kept in a secret file
not accessible to the public. In addition, a written decision to
such effect shall be made and served to the patent applicant,
his/her patent attorney and the inventor accordingly.
The patent applicant, his/her patent attorney and the inventor shall
keep the confidentiality of the invention of the nature as described
in the preceding Paragraph. Upon violation of this confidential
clause by any of the aforesaid parties, the right to apply for
patent for such invention shall be deemed to have been waived.
The confidential period shall last for one year from the date the
written decision is served on the patent applicant and may be
extended on a year-by-year basis. The Patent Authority shall, within
one month prior to the expiry of the confidential period, consult
with the Ministry of National Defense or the relevant national
security authorities about the continuation of the confidential
period. If the confidential requirement of a patent case is no
longer necessary, such patent shall be published.
The Government shall make appropriate compensation for any damages
to be sustained by the patent applicant during the confidential
period.
Section 4: Patent Rights
Article 51
A patent application filed in respect of an invention is
approved by a written decision shall be published only after the
issue fee and the first year annuity have been paid by the applicant
within three (3) months after the service of the aforesaid written
decision; if the foregoing fees have not been paid upon expiry of
the above-given deadline, no publication shall be made, and the
patent right for said invention shall not exist ab initio,.
The granted patent rights shall being on the date of publication,
and a patent certificate shall be issued thereto.
The term of an invention patent right shall ends with twenty (20)
years from the filing date of the patent application.
Article 52
In the case of invention patents covering pharmaceuticals,
agrichemicals, or processes for preparing the same, a patentee may
apply for an extension of his/her patent term for two (2) to five
(5) years, if, pursuant to other acts or regulations, a prior
government approval must be secured to practice such patents, for
which the processing exceeds two (2) years after the publication of
the patents. Only one such extension shall be permitted provided,
however, that the patent term extended shall not exceed the length
of time required for obtaining an approval from the central
government authority in charge of end enterprises. In case the
length of time required for obtaining an approval exceeds five (5)
years, the term of extension shall still be limited to five (5)
years.
Any application for an extension of the term of a patent right must
be filed with the Patent Authority by submitting a written
application together with supporting evidence within three (3)
months from the date of the first government approval involved
provided, however, that no extension application shall be filed
within six (6) months prior to the expiration of the original patent
term.
To determine the term of extension of a patent under the preceding
Paragraph, the Competent Authority shall take into consideration the
impact of the extension on the health of nationals in general and
shall prescribe the approving rules in conjunction with the central
government authority in charge of the end enterprises concerned.
Article 53
The Patent Authority shall designate examiner(s) to examine an
invention patent extension application and shall make written
decision which shall be served on the patentee or his/her patent
attorney.
Article 54
Under any of the following circumstances, any person may file an
invalidation action together with relevant evidence with the Patent
Authority against the term extension of an invention patent granted
by the Patent Authority:
1. If it is not necessary to obtain a government approval for
practicing the
patented invention at issue;
2. If the patentee or his/her licensee has not obtained a government
approval
as required;
3. If the approved term of extension exceeds the length of time in
which the
patented invention can not be practiced;
4. If the patent extension application is filed by a person other
than the
patentee;
5. If the patent right is jointly owned by two or more persons, and
the
extension application is not filed in the name of all
co-owners;
6. In case the application for extension was based on the time spent
in
conducting experiments or testing in a foreign country, the
extended term
allowed by the Patent Authority exceeds the duration
recognized by the
patent authority of such foreign country; or
7. The time required for obtaining an approval is less than two
years.
If an invalidation action against the grant of a patent term
extension has become irrevocably sustained, the extended patent term
originally granted shall become non-existing ab initio. However, if
such invalidation action is irrevocably sustained on the grounds
listed in Item (3) or Item (6) of the preceding Paragraph, only the
exceeding term shall be deemed non-existing.
Article 55
When the Patent Authority acknowledges the existence of any of
the events set forth in Paragraph One of the preceding Article, it
may, ex officio, revoke the extended term of the invention patent
right at issue.
When the revocation of the approved extension of the term of a
patent right becomes irrevocable, the originally approved extension
shall be deemed not in existence ab initio; however, if the
irrevocable revocation is rendered as a result of violation of the
provisions of Item 3 or Item 6 of Paragraph One of the preceding
Article, the exceeding duration shall be deemed non-existing.
Article 56
Unless otherwise provided for in this Act, the patentee of a
patented article shall have the exclusive right to preclude other
persons from manufacturing, making an offer for sale, selling,
using, or importing for above purposes the patented article without
his/her prior consent.
Unless otherwise provided for in this Act, the patentee of a
patented process shall have the exclusive right to preclude others
from using such process and using, selling or importing for above
purposes the articles made through direct use of the said process
without his/her prior consent.
The scope of an invention patent right shall be determined based on
the claim(s) set forth in the specification of the invention. The
descriptions and drawings of the invention may be used as reference
when interpreting the scope of the claims in the patent application.
Article 57
The effect of an invention patent right shall not extend to any
of the following matters:
1. Where the invention is put into practice for research,
educational or
experimental purposes only, with no profit-seeking acts
involved therein;
2. Where, prior to filing for patent, the invention has been used in
this country,
or where all necessary preparations have been completed for
such purpose
provided, however, that this provision shall not apply where
knowledge of
the manufacturing process was obtained from the patent
applicant within six
(6) months prior to applying for patent and the patent
applicant has made a
statement concerning the reservation of his/her patent right
therein;
3. Where the article has already been in existence in this country
prior to the
filing of the patent application;
4. Where the article is simply a vehicle or a device thereof that
passes the
territory of this country;
5. Where, in the case of revocation of the patent right acquired by
a person
other than the one entitled thereto as a result of an
invalidation action filed
by the patentee, the licensee has, prior to the revocation of
the patent
involved, used the patent in good faith or completed all
necessary
preparations therefore in this country; and
6. Where the patented articles manufactured by the patentee or under
the
consent of the patentee are put to use or resold after the
sale thereof. The
aforesaid manufacture and sale are not limited to those
committed in this
country.
The user referred to in Items 2 and 5 of the preceding Paragraph
shall confine his/her continued use of the invention to his/her
original enterprise exclusively. The geographic areas in which sale
can be made under Item 6 of the preceding Paragraph shall be
determined based on the facts by the court.
The licensee of the patent right which has been revoked as a result
of an invalidation action as referred to in Item 5 of the first
Paragraph under this Article shall pay the patentee a reasonable
amount of royalty from the date of receiving a written notification
from the patentee, provided that the licensee continues to practice
the patent after the revocation of the patent.
Article 58
For medicines manufactured by concocting two or more medicines
or the concocting process itself, the patent right shall not cover
prescriptions made by physicians or the medicines prepared in
accordance with such prescriptions.
Article 59
The assignment, trust or licensing made by the patentee of the
patent right of an invention to another person to practice the
invention, or the pledge created on the patent by the patentee shall
not be asserted against any third party, unless it has been
registered with the Patent Authority.
Article 60
An assignment or a licensing of an invention patent shall not
take effect if the contract signed therefor contains any of the
following circumstances that will give rise to unfair competition:
1. To prohibit or restrict the assignee from using any specific
article or process
not furnished by the assignor or licensor; or
2. To require that the assignee purchase products or raw materials
of the
assignor which is not under patent protection.
Article 61
In the case of the joint-ownership of an invention patent, other
than the practice of the patent by the joint-owners themselves, the
patent shall not be assigned or licensed to others for practice
without the consent of all joint-owners. If, however, there is an
agreement providing otherwise, such agreement shall govern.
Article 62
A joint-owner of an invention patent shall not assign or entrust
his/her share thereof to another person or create a pledge on the
same patent, without the consent of all the other joint-owners.
Article 63
An invention patentee who has suffered damages as a result of
war between the ROC and a foreign country may apply for a
prolongation of the term of his/her patent for five (5) to ten (10)
years, and only one such prolongation shall be permitted; provided,
however, that this provision shall not apply if the patentee is a
national of the belligerent country.
Article 64
An invention patentee may file an application for making
amendment(s) to the contents of the specification and drawings only
in respect of the following matters:
1. Narrowing the scope of the claims:
2. Correction of the error(s) made in the specification; or
3. Explanation of obscure description(s).
Any amendment to be made under the preceding Paragraph shall not
exceed the scope of contents which were disclosed in the original
specification or drawings while filing the patent application, and
shall not substantially expand or alter the scope of the patent
claims.
Upon the approval of the amendment(s), the Patent Authority shall
publish the cause of such amendment(s) in the Patent Gazette.
The effect of the amendment(s) to the the specification and/or
drawings shall, upon publication, be retroactive to the filing date
of the patent application concerned.
Article 65
An invention patentee shall not abandon his/her patent right or file
any application as provided in the preceding Article without the
consent of the licensee or the pledgee.
Article 66
An invention patent right shall extinguish ipso facto under any of
the following circumstances:
1. In the case of expiry on the duration of a patent right, from the
day
following the expiration;
2. In the case of death of the patentee without an heir, from the
date the
patent right accrues to the Treasury as provided for in
Article 1,185 of the
Civil Code;
3. In the case of the patentee's failure of effecting the payment of
a patent
annuity for the second year or any year thereafter within the
grace period,
from the day following the expiration of the original
statutory period for such
payment; except for the patent right to be reinstated under
Paragraph Two,
Article 17 of this Act; or
4. In the case of voluntary abandonment of a patent right, from the
date of
the patentee's written declaration to such effect.
Article 67
Under any of the following circumstances, an invention patent
right shall be revoked and the patent certificate issued thereto
shall be recalled within a given time limit by the Patent Authority
either by an invalidation action or ex officio, and if recalling
fails, a public notice for revocation of said patent certificate
shall be published:
1. If the invention is found in violation of the provisions of
Paragraph One,
Article 12, Articles 21 through 24, Article 26, Article 31 or
Paragraph Four,
Article 49 of this Act;
2. If the home country of the patentee does not accept the patent
applications to be filed by nationals of the ROC; or
3. If the invention patentee is found being a person other than the
person
entitled to file the invention patent application.
Where an invalidation action is filed on the ground that the patent
right in question is in violation of the provisions set out in
Paragraph One, Article 12 of this Act or under the circumstance set
forth in Item 3 of the preceding Paragraph, the petitioner shall be
limited to an interested party; whereas, in any other cases, any
person shall be entitled to file to the Patent Authority an
invalidation action with evidences.
Any supplemental reason and evidence from the petitioner shall be
filed within one month from the date the invalidation action is
initiated provided, however, that any supplemental reason and/or
evidence that is submitted prior to the conclusion rendered on
examination of an invalidation action shall still be examined.
Once an invalidation action is dismissed after the examination, no
person may file another invalidation action based on the same fact
or the same evidence.
Article 68
An interested party may institute an invalidation action after
the patent has expired or extinguished ipso facto if he/she has
reinstatable legitimate interests as a result of the revocation of
the patent.
Article 69
Upon receipt of a written petition for patent invalidation, the
Patent Authority shall serve a duplicate of such written petition to
the patentee of the patent challenged.
The patentee of the patent challenged shall, within one month after
the service of the written petition, file a statement of defense,
and the examination of the invalidation action shall proceed without
further notice, if the patentee fails to file the statement of
defense upon expiry of the said one-month deadline, except an
extension application with good cause shown therein has been filed
and approved prior to the deadline.
Article 70
For the examination of an invalidation action, the Patent
Authority shall designate a patent examiner who did not participate
in the examination of the original patent application and shall
require that the designated examiner make a written examination
decision which shall be serviced on both of the patentee and the
petitioner concerned.
Article 71
In the process of examining a patent invalidation action, the
Patent Authority shall, upon a request or ex officio, notify the
patentee involved to take any of the following actions:
1. to appear before the Patent Authority for an interview;
2. to conduct necessary experiment, or to submit supplemental
model(s) or
sample(s); and
3. to make amendment(s) in accordance with the provisions set out in
Paragraph One and Paragraph Two, Article 64 of this Act.
The Patent Authority may, when necessary, visit the site or a
designated place for inspection and observation of the experiment,
or the model(s) or sample(s) as required in Item 2 of the preceding
Paragraph.
Where amendment(s) to the specification or drawings of a patented
invention is (are) required under Item 3, Paragraph One of this
Article, the Patent Authority shall give the petitioner a notice of
such request.
Article 72
For filing an invalidation action against the invention patent
term extension under Article 54 of this Act, the provisions set out
in Paragraph Three and Paragraph Four of Article 67, and the
preceding four Articles herein shall apply mutatis mutandis.
For revocation of a patent right ex officio under Article 67 of this
Act, the provisions set out in the preceding three Articles shall
apply mutatis mutandis.
Article 73
Under any of the following circumstances, the revocation of an
invention patent right shall become irrevocable:
1. No administrative remedy has been sought in accordance with the
act; and
2. Where an irrevocable decision on dismissal of the action
instituted for
administrative remedy is rendered.
The effect of an irrevocably-revoked invention patent right shall be
deemed non-existent ab initio.
Article 74
The grant, alteration, extension, prolongation, assignment,
trust, licensing, compulsory licensing, revocation, extinguishments
or pledging of an invention patent right as well as other matters
which should be published, the Patent Authority shall effect such
publication in the Patent Gazette.
Article 75
The Patent Authority shall establish and maintain a register of
patent rights, in which the title of the patent rights granted, the
term of each patent right, the changes in patent rights, and all
other matters required by the act shall be registered.
The register of patent rights set forth in the preceding Paragraph
may be made and maintained by electronic means and shall be made
available to the public for reading and making handwritten,
photographic or reproduced copies therefrom.
Section 5: Practicing
Article 76
In order to cope with the national emergencies, or to make
non-profit-seeking use of a patent for enhancement of public
welfare, or in the case of an applicant's failure to reach a
licensing agreement with the patentee concerned under reasonable
commercial terms and conditions within a considerable period of
time, the Patent Authority may, upon an application, grant a right
of compulsory licensing to the applicant to put the patented
invention into practice; provided that such practicing shall be
restricted mainly to the purpose of satisfying the requirements of
the domestic market. However, if the application for compulsory
licensing of a patent right covers semiconductor technology, such
application may be allowed only if the proposed practicing is
purposed for a non-profit-seeking use contemplated to enhance the
public welfare.
In the absence of the conditions set forth in the preceding
Paragraph, the Patent Authority still may, upon an application,
grant to the applicant a compulsory license to practice the patented
invention in the event that the patentee has imposed restrictions on
competition or has committed unfair competition, as confirmed by a
judgment given by a court or a disposition made by the Fair Trade
Commission of the Executive Yuan.
Upon receipt of a written application for such compulsory licensing,
the Patent Authority shall send a duplicate copy thereof to the
patentee, requesting that a response be filed within three (3)
months. If no response is filed within the specified time limit, the
Patent Authority may decide the matter at its own discretion.
The right of compulsory licensing shall not preclude other persons
from obtaining the right to practice the same patented invention.
The grantee of the compulsory license shall pay to the patentee an
appropriate compensation. In the case of dispute over the amount of
such compensation, the amount shall be decided by the Patent
Authority.
The compulsory license shall be transacted together with the
business pertaining to the compulsorily licensing for assignment,
trust, inheritance, licensing or pledge creation.
Upon extinguishment of the cause of compulsory licensing, the Patent
Authority may terminate the compulsory license upon an application.
Article 77
If the person who has been granted a right of compulsory
licensing under the provisions of the preceding Article has acted
contrary to the purposes of the compulsory licensing, the Patent
Authority may, upon an application filed by the patentee or ex
offocio, annul the compulsory license.
Article 78
The term "reinvention" as used herein shall mean an invention
which is accomplished through use of the principal technical
contents of an invention or a utility model created by another
person.
The patentee of a reinvention shall not practice his/her patented
invention without obtaining a prior consent from the patentee of the
original invention.
Where a product manufactured in accordance with a patented
manufacturing process is covered by a product patent granted to
another person, the patentee of such manufacturing process patent
shall not put his/her invention into practice without obtaining a
prior consent of the patentee of the product patent.
The patentee of the reinvention patent and the patentee of the
original invention patent, or the patentee of the manufacturing
process patent and the patentee of the product patent, as referred
to in the preceding two Paragraphs, may reach an agreement on cross
licensing arrangement for practicing the inventions.
If the agreement on cross licensing arrangement set forth in the
preceding Paragraph cannot be reached, the patentee of the
reinvention patent and the patentee of the original invention
patent, or the patentee of the manufacturing process patent and the
patentee of the product patent may apply for compulsory licensing in
accordance with Article 76 of this Act. However, such compulsory
licensing application may not be filed by the patentee of the
reinvention or the patentee of the manufacturing process patent
unless the technology expressed by the reinvention or by the
manufacturing process invention has important technical
improvement(s) with considerable economic significance over the
original invention or the product invention.
The compulsory license obtained by the patentee of a reinvention
patent or the patentee of a manufacturing process patent shall be
transacted together with the patent right of said patentee for
assignment, trust, inheritance, licensing or pledge creation.
Article 79
An invention patentee shall mark the serial number of patent
certificate on his/her patented article or the packaging thereof,
and may require that his/her licensee or the grantee of compulsory
license do the same. In case of failure to affix such marking, no
claim for damages shall be allowed, except in the case that the
infringer has known, or should have known as proved by facts, the
existence of the patent.
Section 6: Government Fees
Article 80
In respect of each application concerning invention patents, the
applicant shall pay a fee at the time of filing the application.
For an allowed patent, the invention patentee shall pay an issue fee
and annuities. In the case of an approval for an extension or
prolongation of patent term, annuities shall still be paid during
the extended or prolonged patent term.
The amount of the application fee, issue fee and annuities shall be
prescribed by the Competent Authority.
Article 81
The annuity for an invention patent shall be payable commencing
from the publication date. Payment of the first year annuity shall
be made in accordance with the provision set out in Paragraph One,
Article 51 hereof, while the payment of the second year annuity and
the annuities thereafter shall be made prior to the expiration of
each of the current patent years.
The annuity for several years may be paid at one time. Under such
circumstance, if the annuity rate is adjusted upwardly, the patentee
concerned will not be required to pay the deficit.
Article 82
In case the annuity payable for the second year or each year
thereafter due is not paid within the regulatory period for the
annuity payment, it may be paid later within six (6) months after
expiry of the said regulatory period provided, however, that the
amount of late payment shall be twice as much as the regular amount
of the annuity.
Article 83
Where a patentee is a natural person, school or a small and
medium enterprise, he/it may file an application with the Patent
Authority for a reduction or exemption of the patent annuity.
Regulations governing the conditions, number of years, amount, and
other matters of such reduction and exemption shall be prescribed by
the Competent Authority.
Section 7: Indemnity for Damages and Litigation
Article 84
In the event of infringement on an invention patent, the
patentee may claim for damages and demand the removal of the
infringement and the prevention of any threat of infringement.
An exclusive licensee may also make the claim or demand set forth in
the preceding Paragraph, unless otherwise provided for in an
agreement, and in such case, the provisions set out in the agreement
shall prevail.
When an invention patentee or an exclusive licensee claims for
damages pursuant to the preceding two Paragraphs, he/she may request
for destruction of the infringing products or the raw materials or
implements used in infringing the patent, or request for other
necessary disposals.
When the inventor's right to indicate his/her name is infringed,
he/she may request a ruling to indicate the inventor's name or
otherwise to recover his/her reputation.
The right to claim provided in this Article shall become
extinguished if not exercised within two (2) years from the time the
patentee is aware of the infringement act and the obligator for the
damages, or within ten (10) years from the time of the infringement
act.
Article 85
To claim damages in accordance with the preceding Article, any
of the following options may be adopted for calculating of the
amount of damages:
1. To claim in accordance with Article 216 of the Civil Code. A
patentee may,
however, take the balance derived by subtracting the profit
earned through
the practice of his/her patent after the existence of
infringement from the
profit normally expected through the practice of the same
patent as the
amount of the damages, provided that no proving method can be
presented
to justify the damages;
2. To claim based on the profit earned by the infringer as a result
of his/her
infringement act. The entire income derived from the sale of
the infringing
articles shall be deemed the infringer's profit, provided
that the infringer is
unable to produce proof to justify his/her costs or
necessary expenses.
In addition to the provisions set forth in the preceding Paragraph,
the patentee may claim separately for damages at a reasonable amount
in case the business reputation of the patentee has been downgraded
or injured as a result of the infringement.
Subject to the provisions of the preceding two Paragraphs, if the
infringement is found to be an intentional act, the court may, after
considering the details of the infringement, decide the compensation
in an amount higher than the amount of damages estimated, but not
more than triple damages.
Article 86
Any article used in an act of patent infringement or produced by
such an act may, upon the application of the injured party to the
court, be provisionally seized to serve as the whole or a part of
compensation for the damages as may be awarded by judgment.
When the injured party instituted an action claiming for damages
under the preceding Article and applying for provisional seizure,
the court shall allow procedural relief in accordance with the Code
of Civil Procedure.
Article 87
Where an article which is made by using a patented manufacturing
process has never been seen in this country or outside of the
country before the filing of a patent application for the
manufacturing process, an article identical thereto made by another
person shall be inferred as having been manufactured by using said
manufacturing process.
The inference made under the preceding Paragraph may be overturned
by presentation of counter-evidence. A proof made by the defendant
that the process used by him in manufacturing the article at issue
is different from the patented process shall be deemed as
presentation of counter-evidence. The legal rights and interests in
the manufacture and trade secret, as disclosed by the defendant in
producing such counter-evidence, shall be fully protected.
Article 88
With regard to a litigation involving an invention patent, the
court shall send to the Patent Authority one original copy of the
judgment rendered by it.
Article 89
The injured party may, after an irrevocable favorable judgment
is rendered, request the court issue a ruling for publishing in a
newspaper the judgment in full or in part, at the expenses of the
losing party.
Article 90
For any civil proceedings pending in a court in connection with
an invention patent, the court may suspend the trial process until a
decision on the patent application, invalidation, or revocation
action related thereto has become irrevocable.
When rendering a ruling for suspending the trial proceedings in
accordance with the provisions set out in the preceding Paragraph,
the court shall look into the legitimacy of the cause of the
invalidation action.
Where an invalidation action instituted involves the trial
proceedings of the patent infringement actsuit, the Patent Authority
shall give the priority to the examination of the invalidation
action.