Provisions applied mutatis mutandis to utility model patent "Article 22, Article 23, Article 26, Articles 28 to 31, Article 33, Paragraphs 3 to 7 of Article 34, Article 35, Paragraphs 2 and 3 of Article 43, Paragraph 3 of Article 44, Paragraph 2 of Article 46, Paragraph 2 of Article 47, Article 51, Paragraphs 1, 2 and 4 of Article 52, Paragraphs 1, 2, 4 and 5 of Article 58, Article 59, Articles 62 to 65, Article 67, Paragraphs 2 and 3 of Article 68, Article 69, Article 70, Articles 72 to 82, Articles 84 to 98, and Articles 100 to 103 shall apply mutatis mutandis to utility model patent.

Unrecognized foreign juristic person or organization

An unrecognized foreign juristic person or organization may file civil suits in respect of the matters governed by this Act.

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Patent infringement assessment

A court of law may form specialized tribunal(s) or assign specific staff members to take charge of invention patent litigation cases.

The Judicial Yuan may designate specialized institution(s) to conduct patent infringement assessment.

A court of law in processing a litigation pertaining to an invention patent may request the specialized institution(s) designated according to the preceding paragraph to conduct patent infringement assessment.

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Substantial conditions

An invention which is industrially applicable may be granted a patent upon application in accordance with this Act, except for the following:

1. the invention was disclosed in a printed publication prior to the filing of the patent application;
2. the invention was publicly exploited prior to the filing of the patent application; or
3. the invention was publicly known prior to the filing of the patent application.

An invention that is without the circumstances prescribed in the subparagraphs of the preceding paragraph but can be easily made by a person ordinarily skilled in the art based on prior art shall not be patented .

A disclosure made by or against the applicant’s will shall not be deemed as one of the circumstances that would preclude the grant of an invention patent prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, provided that the concerned patent application is filed within twelve (12) months after the date of the disclosure.

For the publication in a gazette made in this country or a foreign country in accordance with the laws as the consequence of filing a patent application and made by the applicant’s will, the preceding paragraph is not applicable.

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Deemed as lack of novelty

Where an invention claimed in a patent application for invention is identical to an invention or utility model disclosed in the description, claim(s) or drawing(s) of an earlier-filed patent application for invention or utility model which is laid open or published after the filing of the later-filed patent application, an invention patent shall not be granted; however, this shall not apply where the applicant of the later-filed patent application is also the applicant of the earlier-filed patent application for invention or utility model.

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Disclosure

The description shall fully disclose the invention in a manner clear and sufficient for it to be understood and carried out by a person ordinarily skilled in the art.

Claim(s) shall define the claimed invention, and more than one claim may be included therein. Each claim shall be disclosed in a clear and concise manner and be supported by the description.

An abstract shall clearly contain a summary of the disclosed invention; it shall not be taken into account for the purpose of determining the sufficiency of the disclosure and the patentability of the claimed invention.

The manners of disclosure for description, claim(s), abstract, and drawing(s) shall be prescribed in the Enforcement Rules of the Patent Act.

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Claim of priority

An applicant claiming priority in accordance with the preceding article shall simultaneously make a declaration with respect to the following when filing a patent application:

1. the filing date of the first patent application;
2. the country or member of WTO in which the first patent application was filed; and
3. the application number of the first patent application.

Within sixteen (16) months after the earliest priority date, the applicant shall submit a certified copy of the first patent application issued by the foreign patent authority under the preceding paragraph.

In case of a violation of Subparagraph 1 or Subparagraph 2 of Paragraph 1 or the preceding paragraph, the priority claim shall be deemed not to have been made.

Where an applicant unintentionally fails to claim priority claim at the time of filing, or where the priority claim is deemed not to have been made as prescribed in violation of Subparagraph 1 or Subparagraph 2 of Paragraph 1, the applicant may, within sixteen (16) months after the earliest priority date, apply for reinstatement of priority claim, pay the required fees and undertake actions set forth in Paragraph 1.

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Priority claim based on earlier application

An applicant filing a subsequent patent application based on an earlier patent application for invention or utility model in the ROC may make a priority claim with respect to the invention or utility model disclosed in the description, claim(s) or drawing(s) submitted for the earlier patent application. This provision shall not apply under any of the following circumstances:

1. where a period of twelve (12) months has elapsed after the filing date of the earlier patent application;
2. where priority has been claimed in accordance with the provisions of Article 28 or this article in respect of the invention or utility model disclosed in the earlier patent application;
3. where the earlier patent application is a divisional patent application prescribed under Paragraph 1 of Article 34 or Paragraph 1 of Article 107, or a converted patent application prescribed under Paragraph 1 of Article 108;
4. where the earlier patent application is a patent application for invention that has been published or has been rejected finally and bindingly;
5. where the earlier patent application is a patent application for utility model that has been published or has been rejected finally and bindingly; or
6. where the earlier patent application has been withdrawn or dismissed.

The earlier patent application referred to in the preceding paragraph shall be deemed to have been withdrawn upon an expiry of fifteen (15) months after its filing date.

Priority claimed shall not be withdrawn upon an expiry of fifteen (15) months after the filing date of the earlier patent application.

In the event that a subsequent patent application filed with priority claim in accordance with Paragraph 1 is withdrawn within fifteen (15) months after the filing date of the earlier patent application, the priority claim thus made shall be deemed to have been withdrawn at the same time.

Where an applicant claims two or more priorities for a patent application, the calculation of priority period shall be on the basis of the earliest priority date.

For a patent application filed with priority, examination on its patentability shall be based on the priority date.

Where a priority claim is made in accordance with Paragraph 1, the filing date and the application number of the earlier patent application shall be declared at the time of filing. If such declaration is not made, priority claim shall be deemed not to have been made.

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First-to-file principle

Where two or more patent applications are filed for the same invention, only the earliest application can be granted. The above shall not apply if the priority date claimed for the later-filed 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, the applicants shall be notified to reach an agreement with respect to the matter concerned. If such an agreement cannot be reached, none of the applications shall be granted. If the said patent applications are filed by the same applicant, the applicant shall be notified to select one patent application within a specified time period; failure to make a selection within the time period shall result in the rejection of all such patent applications.

While the applicants concerned are in the process of reaching an agreement, the Specific Patent Agency shall require that these applicants report the results of the negotiation within an appropriate time period. If the said report is not provided within the specified time period, it shall be deemed that an agreement has not been reached.

Where a patent application for invention and a patent application for utility model are filed separately in respect of the same creation, the provisions set forth in the preceding three paragraphs shall apply mutatis mutandis, except for the circumstances stipulated in Article 32.

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Invention Patent

A patent application for invention shall relate to one invention.

Two or more inventions so linked as to form a single general inventive concept may be filed in one application.

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Divisional application of invention patent

A patent application that substantially contains two or more inventions may, upon notice by the Specific Patent Agency or upon request by the applicant, be divided into two or more divisional applications.

A request for division shall be filed within any of the following time periods:

1. before a reexamination decision on the original patent application is rendered; or
2. within three (3) months after the date on which an approval decision for the original patent application or reexamination is served.

The filing date of the divisional patent application shall be the same as the filing date of the original application. Where the priority claim has been made, the applicant may claim priority for the divisional patent application.

The divisional patent application shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) of the original patent application as filed.

For the divisional patent application filed in accordance with Subparagraph 1 of Paragraph 2, the examination thereof shall resume the completed examination procedure of the original patent application.

For the divisional patent application filed in accordance with Subparagraph 2 of Paragraph 2, it shall be based on the invention(s) disclosed in the description or the drawing(s), but shall not be the same as that have been approved in the original patent application; the examination thereof that has been conducted before the original patent application is approved shall be resumed.

The description, claim(s), or drawing(s) of the original patent application that have been approved may not be altered and shall be published based on the claim(s) and drawing(s) as originally approved.

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Invalidation action filed by the owner of the right to apply for a patent

Where an invalidation action is filed against a granted patent by the owner of the right to apply for a patent or by the joint owner(s) of the right to apply for a patent within two (2) years after the publication date of the patent concerned in accordance with Subparagraph 3, Paragraph 1 of Article 71, and where the said person or joint owner(s) newly files a patent application for the same invention within two (2) months after the day on which the invalidation decision revoking the patent has become final and binding, the filing date of the revoked patent shall be the filing date for the newly filed patent application.

A patent application newly filed in accordance with the preceding paragraph shall not be published again.

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Amendment during examination; final notice

Unless otherwise stipulated in this Act, when examining a patent application for invention, the Specific Patent Agency may, upon request or on its own initiative, notify the applicant to amend the description, claim(s), or drawings within a specified time period.

Except for correction of translation errors, any amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.

Where the Specific Patent Agency has issued a notice pursuant to Paragraph 2 of Article 46, a patent applicant shall only make amendment(s) within the specified time period in the notice.

The Specific Patent Agency may, as it deems necessary, issue a final notice after having issued a notice prescribed in the preceding paragraph. The applicant who is to amend claim(s) after a final notice has been issued shall only make the following amendments within the time period specified therein:

1. to delete claim(s);
2. to narrow down the scope of claim(s);
3. to correct errors; or
4. to clarify ambiguous statement(s).

In case of a violation of the provisions in the preceding two paragraphs, the Specific Patent Agency shall state the reasons in a written decision and render such decision accordingly.

The Specific Patent Agency may issue a final notice accordingly if the original patent application or its divisional application meets any of the following conditions:
1. where the content of the notice issued for the original patent application is same as that of the notice issued for the divisional patent application;
2. where the content of the notice issued for the divisional patent application is same as that of the notice issued for the original patent application; or
3. where the content of the notice issued for a divisional application is same as that of the notice issued for other divisional application(s).

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Foreign language documents

Where a patent applicant submits a description, claim(s), and drawing(s) prepared in a foreign language pursuant to Paragraph 3 of Article 25, such foreign language documents shall not be amended.

The Chinese translation submitted pursuant to Paragraph 3 of Article 25 shall not extend beyond the scope of content disclosed in the original foreign language documents as filed.

Any correction of translation errors in the Chinese version as stated in the preceding paragraph shall not extend beyond the scope of content disclosed in the original foreign language documents as filed.

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Grounds for rejection of invention patent application "When a patent application for invention is in violation of the provisions set forth in Articles 21 through 24, Article 26, Article 31, Paragraphs 1 and 3 of Article 32, Article 33, Paragraph 4 and the forepart of Paragraph 6 of Article 34, Paragraph 2 of Article 43, Paragraphs 2 and 3 of Article 44, or Paragraph 3 of Article 108, a decision of rejection shall be rendered. "Before rendering a decision in accordance with the preceding paragraph, the Specific Patent Agency shall notify the applicant to file a response within a specified time period. If the applicant fails to make a response within the time period, a decision of rejection shall be rendered accordingly.

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Publication of patented invention and application for browsing

A claimed invention shall be patented if there is no reason for negating its patentability, and the claim(s) and the drawing(s) of the patent application shall be published.

Any person may apply for viewing, transcribing, photographing, or photocopying the written decision of examination, description, claim(s), abstract, drawing(s), and the file wrapper in connection with a patent application which has been published, except for the information which should be kept confidential by the Specific Patent Agency in accordance with laws.

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Confidentiality of invention involving national security

Where, through examination, an invention involves national defense secrets or any other secrets pertaining to national security, the Ministry of National Defense or relevant national security authorities shall be consulted for their comments; if it is deemed necessary to keep such invention confidential, the application documents of the said patent application shall be sealed. If a request for substantive examination has been filed for the said patent application, an examination decision shall be rendered and served to the applicant and the inventor.

The applicant, patent agent and the inventor shall keep confidential the invention referred to in the preceding paragraph; the right to apply for a patent for such invention shall be deemed to have been abandoned if there is any violation of the confidentiality requirement.

The confidentiality period shall last for one (1) year after the date on which a written decision is served on the applicant, and such period may be extended on an annual basis. The Specific Patent Agency shall consult with the Ministry of National Defense or relevant national security authorities one (1) month prior to the expiration of the confidentiality period and, if confidentiality is no longer required, such patent application shall be laid open.

Where an invention referred to in Paragraph 1 is approved and where confidentiality is deemed unnecessary for such patent application, the Specific Patent Agency shall publish the grant of the invention patent after receiving patent certificate fee and the first-year annuity paid within three (3) months by the applicant. If the said fees are not paid prior to the time period stated above, no publication shall be made.

The Government shall pay a considerable compensation for the loss suffered by the applicant during the confidentiality period.

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Payment of fees and publication

For a patent application for invention that is approved, the grant of such patent application shall be published only when the patent certificate fee and the first-year patent annuity are paid by the applicant within three (3) months after the date on which the approval decision is served; if the fees are not paid within the said time period, no publication shall be made.

A patent right granted to a patent application for invention shall start from the publication date of the patent, and a patent certificate shall be issued thereto.

The term of an invention patent shall expire after a period of twenty (20) years from the filing date of the application.

Where the applicant unintentionally fails to pay the required fees within the time period set forth in Paragraph 1 or Paragraph 4 of the preceding article, the applicant should pay the patent certificate fee and two times the first-year patent annuity within six (6) months after the period has expired. After the said payment has been made, the Specific Patent Agency shall publish the patent.

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Effects of invention patent right

Unless otherwise provided for in this Act, the patentee of an invention patent has an exclusive right to prevent others from exploiting the invention without the patentee’s consent.

Where the invention is a product, exploiting of which means the acts of making, offering for sale, selling, using, or importing that product for the aforementioned purposes.

Where the invention is a process, exploiting of which means the following acts:

1. using the process; and
2. using, offering for sale, selling or importing for these purposes the product obtained directly by that process.

The extent of the protection conferred by an invention patent shall be determined by the claim(s), and the description and drawing(s) may be considered as a reference when interpreting the claim(s).

The abstract shall not be used for the purpose of interpreting claim(s).

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Limitations of patent right

The effects of an invention patent right shall not extend to the following circumstances:

1. acts done privately and for non-commercial purpose(s);
2. necessary acts to exploit the invention for research or experimental purpose(s);
3. acts done by a person who has been exploiting the invention or making all the necessary preparations for doing such act in this country before the filing date of the invention. However, this provision shall not apply where the person has learned of the invention from the patent applicant for less than twelve (12) months and the patent applicant has made a statement reserving his/her right to a patent being granted;
4. a vehicle merely passing through the territory of this country, or any device of such vehicle;
5. where a patent granted to a person not the owner of the right to apply for a patent is revoked as a result of an invalidation action filed by the patentee, acts done by a licensee who has, prior to invalidation, been exploiting the invention or making all the necessary preparations to do such an act in good faith;
6. where, after the sale of a patented product made by the patentee or made under consent of the patentee, using or reselling such product. The making and selling as stated above are not limited to acts done domestically; and
7. where, after an invention patent is extinguished pursuant to Subparagraph 3, Paragraph 1 of Article 70 and before it is reinstated and published pursuant to Paragraph 2 of Article 70, acts done by a person who has been exploiting the invention or making all the necessary preparations to do such an act in good faith. "The person exploiting the invention as stated in Subparagraphs 3, 5, and 7 of the preceding paragraph, may continue such exploitation within the original business purpose(s).

A licensee as stated in Subparagraph 5 of Paragraph 1, who continues to exploit the invention after the patent is revoked, shall pay the patentee a reasonable royalty from the date of receiving a written notice from the patentee.

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Sub-licensing

An exclusive licensee may sub-license a third party to exploit the licensed patent unless otherwise agreed upon by contract.

A non-exclusive licensee shall not be allowed to sub-license a third party to exploit the licensed patent without the consent of the invention patentee or the exclusive licensee.

The sub-licensing contract shall have no locus standi against any third party unless it is recorded with the Specific Patent Agency.

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Disposal of jointly-owned patent right

Where a patent right is jointly owned, except for exploitation by each of the joint owners, it shall not be assigned, entrusted, licensed, pledged, or abandoned without the consent of all the joint owner(s).

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Disposal of one’s own share of jointly-owned patent right

Where a patent right is jointly owned, no joint owner may assign, entrust or establish a pledge on his/her own share without the consent of all the other joint owner(s).

Where a joint owner of a patent right has abandoned his/her own share, this share shall be vested in other joint owner(s).

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Post-grant amendment of invention patent

The patentee filing a request for amending the description, claim(s) or drawing(s) of a granted invention patent shall only conduct the following:

1. to delete claim(s);
2. to narrow down the scope of claim(s);
3. to correct errors or translation errors; and
4. to clarify ambiguous statement(s).

Except for correction of translation errors, a post-grant amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.

For a patent application for invention filed by submitting the description, claim(s), and drawing(s) in a foreign language pursuant to Paragraph 3 of Article 25, the correction of translation errors shall not extend beyond the scope of content disclosed in the original foreign language documents as filed.

An post-grant amendment shall not substantially enlarge or alter the scope of the claim(s) as published.

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Examination of post-grant amendment

The Specific Patent Agency shall designate a patent examiner to conduct examination of post-grant amendment, render a decision and serve it on the patentee, except for a post-grant amendment filed in accordance with Article 77.

After approving the post-grant amendment, the Specific Patent Agency shall publish the examination decision therefor.

Once a description, claim(s) and drawing(s) are amended and published, such post-grant amendment shall take effect retroactively from the filing date.

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Restriction on abandoning or amending patent right

A patentee shall not abandon the patent right, or apply for a post-grant amendment as stated in Subparagraph 1 or 2, Paragraph 1 of Article 67 without the consent from the licensee(s) or pledgee(s) .

Where a patent right is jointly owned, no joint owner may apply for post-grant amendment as stated in Subparagraph 1 or 2, Paragraph 1 of Article 67 without the consent from all the joint owner(s).

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Extinguishment of patent right

An invention patent right shall become extinguished under any of the following circumstances:

1. where the patent term has expired, and the patent shall become extinguished;
2. where the patentee has passed away without heirs;
3. where the annuity of the second or any subsequent years is not paid within the payment time period, the patent right shall become extinguished retrospectively after the expiration of the original due date; or
4. where the patentee abandoned the patent, the patent right shall be extinguished from the date the patentee makes a declaration in writing.

The patentee who unintentionally fails to pay a patent annuity within the time period for late payment set forth in Paragraph 1 of Article 94 may apply for reinstatement of the patent rights within one (1) year after the expiration of the time period of late payment by paying triple the amount originally due, whereby the Specific Patent Agency shall publish with respect to the above.

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Invalidation action

Where an invalidation action is filed, a request form containing a statement and reason(s), along with evidence shall be provided.

Where a patent contains more than one claim, an invalidation action may be filed against parts of the claims.

An invalidation statement shall not be modified or added after filing, but it can be narrowed.

A requester of invalidation action may provide invalidation reasons or evidence within three (3) months after the date of filing the said action.The reason or evidence shall not be examined if the requester fails to provide them within the specified time period.

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Invalidation proceedings

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.

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.

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.

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.

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Principle of ex officio

When conducting invalidation proceedings, the Specific Patent Agency may, by ex officio, examine the reason(s) and evidence not provided by the requester of invalidation action but within the scope of the invalidation statement, and notify the patentee to respond within a specified time period. The invalidation proceedings shall be conducted accordingly if the patentee fails to respond within the time period.

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Interview and inspection in invalidation proceedings

When conducting invalidation proceedings, the Specific Patent Agency may, upon a request or ex officio, notify the patentee to take any of the following actions within a specified time period:

1. to appear at the Specific Patent Agency for interview; or
2. to conduct necessary experiment(s) or provide model(s) or sample(s).

The Specific Patent Agency may, when necessary, visit the site or a designated place to carry out inspection on the experiment(s) performed or model(s) or sample(s) to be submitted pursuant to Subparagraph 2 of the preceding paragraph.

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Consolidated proceedings of invalidation and post-grant amendment

If, during the invalidation proceedings, a request for post-grant amendment is filed, the said proceedings and post-grant amendment shall be consolidated; the decisions concerned shall be jointly rendered as well.

If the Specific Patent Agency considers the said post-grant amendment approvable, it shall serve a copy of the amended description, claim(s) and/or drawing(s) to the requester of invalidation action.The above shall not apply if the post-grant amendment is made only to delete claim(s).

Where there are two or more requests for post-grant amendment filed during the proceedings of same invalidation action, the earlier-filed request(s) for post-grant amendment shall be deemed to have been withdrawn.

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Consolidated proceedings of multiple invalidation actions

Where there are multiple invalidation actions filed against the same patent, the Specific Patent Agency, when necessary, may consolidate the invalidation proceedings of the said actions.

Where the invalidation proceedings have been consolidated pursuant to the preceding paragraph, decisions concerned may also be rendered jointly.

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Assignment of a patent examiner for invalidation

When conducting invalidation proceedings, the Specific Patent Agency shall assign a patent examiner to render a decision and serve it to the patentee and the requester of invalidation action.

Decision on an invalidation action shall be rendered on a claim-by-claim basis.

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Principle of ne bis in idem

Under any of the following circumstances, any person shall not be allowed to separately file an invalidation action against the same patent based on the same facts and evidence:

1. where another invalidation action has been filed based on the same facts and evidence and considered groundless by a decision; or
2. where new evidence is provided to the Intellectual Property Court pursuant to Article 33 of the Intellectual Property Case Adjudication Act and considered groundless by a judgment.

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Decision of invalidation action

Where an invalidation action against an invention patent is considered well grounded, the patent right shall be revoked; such revocation may be made on a claim-by-claim basis.

Revocation of an invention patent right shall become final and binding under any of the following circumstances:
1. where no administrative remedy proceedings are filed in accordance with laws; or
2. where administrative remedy proceedings are filed but dismissed finally and bindingly.

Where an invention patent is revoked finally and bindingly, the effect of patent right shall be deemed not to have existed.

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Patent Registry

The Specific Patent Agency shall maintain a Patent Registry, in which the patent grants, changes of patent rights, and all other matters required by laws shall be registered.

The Patent Registry set forth in the preceding paragraph may be produced electronically and shall be made available to the public for browsing, transcribing, photographing, or photocopying.

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Publication by electronic means

Matters which should be laid open and published by the Specific Patent Agency in accordance with this Act may be done electronically; the date for such implementation shall be decided by the Specific Patent Agency.

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Grounds for compulsory licensing

In response to national emergency or other circumstances of extreme urgency, the Specific Patent Agency shall, in accordance with an emergency order or upon notice from the central government authorities in charge of the business, grant compulsory licensing of a patent needed, and notify the patentee as soon as reasonably practicable.

The Specific Patent Agency may, upon request, grant compulsory licensing of a patent under any of the following circumstances for which it is deemed necessary:

1. where a patented invention is to be exploited non-commercially for the enhancement of public interest;
2. where a later invention or utility model patent cannot be exploited without infringing upon a prior invention or utility model patent, and where the later invention or utility model patent involves an important technical advancement of considerable economic significance in relation to the prior invention or utility model patent; or
3. where a patentee has committed acts restricting competition or has committed unfair competition acts, for which a judgment has been made by a court of law or a decision has been rendered by the Fair Trade Commission of the Executive Yuan.

Request for compulsory licensing of a patent involving semiconductor technology shall be filed based on the grounds set forth in Subparagraph 1 or 3 of the preceding paragraph. "Request for compulsory licensing of a patent made pursuant to Subparagraph 1 or 2 of Paragraph 2 may only be approved if the requestor has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions, and that such efforts have not been successful within a reasonable time period.

Where a request for compulsory licensing of a patent is made pursuant to Subparagraph 2 of Paragraph 2, the owner of the prior patent may propose reasonable terms and conditions and seek grant of compulsory licensing of the later patent owned by the requestor.

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Procedure and decision of compulsory licensing

After receiving a request for compulsory licensing filed pursuant to Paragraph 2 of the preceding Article or Article 90, the Specific Patent Agency shall notify and require the patentee concerned to respond within a specified time period. If no response is made within the specified time period, the Specific Patent Agency may then proceed to the examination of the compulsory licensing request.

Exploitation of a compulsory license shall be predominantly for the supply of domestic market. The above shall not apply to the compulsory license granted pursuant to Subparagraph 3, Paragraph 2 of the preceding Article.

The decision on a request for compulsory license shall be made in writing and shall indicate the reasons, scope, duration, and the required remuneration. "Granting of compulsory licensing shall not affect the exercise of patent right by the patentee concerned.

The right(s) granted under a compulsory license shall not be assigned, entrusted, inherited, licensed or pledged except for any of the following circumstances:
1. where a compulsory license is granted pursuant to Subparagraph 1 or Subparagraph 3, Paragraph 2 of the preceding Article and is assigned, entrusted, inherited, licensed or pledged with the business involving the exploitation of the patent; or
2. where a compulsory license is granted pursuant to Subparagraph 2 of Paragraph 2 or Paragraph 5 of the preceding Article and is assigned, entrusted, inherited, licensed or pledged with the patent right of the licensee.

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Repeal of a compulsory license

Where a compulsory license granted pursuant to Paragraph 1 of Article 87 is considered no longer necessary by the central government authorities in charge of the business, the Specific Patent Agency shall repeal the compulsory license upon a notice from the said authorities.

The Specific Patent Agency may, upon request, repeal a granted compulsory license under any of the following circumstances:
1. where the fact warranting the compulsory license has been changed and compulsory licensing is no longer necessary;
2. where the licensee fails to properly exploit the patent as required in the compulsory license ; or
3. where the licensee fails to pay the remuneration as determined by the Specific Patent Agency.

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Compulsory licensing of pharmaceuticals: grounds and procedures

For purposes of assisting countries with insufficient or no manufacturing capacities in pharmaceutical sector to obtain pharmaceutical product(s) needed for treating HIV/AIDS, tuberculosis, malaria and other epidemics, the Specific Patent Agency may, upon request, grant a compulsory license to the requestor to exploit a patent concerned for the purpose of producing and importing pharmaceutical product(s) to these countries.

Request for a compulsory license made pursuant to the preceding paragraph may only be granted if the requestor has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time; however, the above shall not apply if compulsory licensing of the required pharmaceutical product(s) has been granted in the importing country.

If the importing country concerned is a WTO member, the requestor shall, when filing a request pursuant to Paragraph 1, provide document(s) proving that the importing country has fulfilled the following:
1. the Council for Trade-related Aspects of Intellectual Property Rights has been notified of the name(s) and expected quantities of the pharmaceutical product(s) needed;
2. the Council for Trade-related Aspects of Intellectual Property Rights has been notified of its intention as an importer and has established that it has insufficient or no manufacturing capacities in the pharmaceutical sector. However, such document(s) of proof is not required if the importing country is a least-developed country; and
3. where the required pharmaceutical product(s) is not patented in the importing country, or where the pharmaceutical product(s) is patented in its territory, the importing country has granted or is about to grant a compulsory license.

The so called 'least-developed countries' mentioned in the preceding paragraph refers to countries announced by the United Nations (UN) as being least-developed countries.

Where the importing country is not a WTO member, but a least-developed country or a country with insufficient or no manufacturing capacities in the pharmaceutical sector, the requestor shall, when filing a request for compulsory licensing pursuant to Paragraph 1, provide document(s) proving that the importing country has fulfilled the following conditions:
1. the name(s) and expected quantities of the pharmaceutical product(s) needed have been filed in writing with the foreign affairs authorities of the ROC; and
2. stating that it agrees to prevent re-exportation of the pharmaceutical product(s) needed.

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Compulsory licensing of pharmaceuticals: export and remuneration

Pharmaceutical product(s) produced under compulsory licensing pursuant to the preceding Article shall be exported to the importing country entirely, and the quantity of the product authorized to be produced shall not be more than the quantity required by the importing country in its notice sent to the Council for Trade-related Aspects of Intellectual Property Rights or the foreign affairs authorities of the ROC.

Pharmaceutical product(s) produced under compulsory licensing granted pursuant to the preceding Article and the external packaging thereof shall be marked with the licensing basis specified by the Specific Patent Agency; the packaging, coloring or shaping of the pharmaceutical product(s) produced under compulsory licensing shall be sufficiently distinguishable from pharmaceutical product(s) produced by the patentee or his/her licensee(s).

The licensee of a compulsory license shall pay appropriate remuneration to the patentee. The amount of remuneration shall be decided by the Specific Patent Agency, taking into account the economic value of the patent of the required pharmaceutical product(s) to the importing country with reference to the human development index issued by the United Nations.

Before exporting the pharmaceutical product(s) produced under a compulsory license, the licensee shall post on a website the quantities, name(s) and destination(s) of such pharmaceutical product(s), as well as distinctive features thereof.

Inspection and registration of the pharmaceutical product(s) produced and exported under compulsory licensing pursuant to the preceding Article shall not be bound by Paragraph 2, Article 40ter of the Pharmaceutical Affairs Act.

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Fees

With respect to each request for patent-related matters, the requestor shall pay fees at the time of filing.

For a granted invention patent, the patentee shall pay a patent certificate fee and patent annuities. If extension or prolongation of patent term is allowed, patent annuities shall still be paid during the extended or prolonged patent term.

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Time period for payment of annuity

The annuity for an invention patent shall be paid starting from the publication date. Payment of the first-year annuity shall be made pursuant to the provision set forth in Paragraph 1, Article 52 hereof, while the payment of the second-year annuity and the annuities thereafter shall be made before the period thereof expires.

The annuity for several years may be paid at one time. Under such circumstance, if the annuity rate is adjusted upward, the patentee concerned will not be required to pay the deficit.

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Addition of annuity

If the annuity for the second or any subsequent year is not paid within the specified time period, a late payment can be made within six (6) months after the original due date with a specified percentage addition.

The additional annuities based on the specified percentage addition as stated in the preceding paragraph means that the additional annuity shall be paid depending on the amount of time elapsed from the original due date. For every month that has elapsed, an additional fee at a ratio of 20% shall be paid; the maximum of the additional fee shall be the same as the amount originally due. The elapsed time from one day to one month shall be deemed as one month.

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Reduction of annuity

Where the patentee of an invention patent is a natural person, school or small and medium enterprise, the patentee may request for a reduction of patent annuity with the Specific Patent Agency.

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Right to claim in the event of patent right infringement

A patentee of an invention patent may demand a person who infringes or is likely to infringe the patent right to stop or prevent such infringement.

In case an infringement of invention patent occurs due to intentional act or negligence, the patentee may claim for damages suffered therefrom.

When making a demand pursuant to Paragraph 1, the patentee may request for destruction of the infringing articles or the materials or implements used in the infringing act, or request for other necessary disposal. "An exclusive licensee may, within the licensed scope, make demands in accordance with the preceding three paragraphs. However, if it is otherwise provided for in an agreement, such agreement shall prevail.

Where the inventor’s right to be indicated as such is infringed, the inventor may request for necessary disposition(s) to have his/her name indicated or to restore the impaired reputation.

The rights to claim as set forth in Paragraph 2 and the preceding paragraph shall become extinguished if not exercised within two (2) years after the patentee has become aware of the damage and the person liable for damages. This right shall also become extinguished if it is not exercised within ten (10) years after the time of infringement.

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Calculation of damages

The damages claimed pursuant to the preceding article may be calculated according to any of the following methods:

1. the method as set forth in Article 216 of the Civil Code; if no method of proof can be produced to prove the damages suffered, a patentee may claim damages based on the difference between the profit earned through patent exploitation after infringement and the profit normally expected through exploitation of the same patent;
2. the profit earned by the infringer as a result of patent infringement; or
3. the amount calculated on the basis of reasonable royalties that may be collected from exploiting the invention patent being licensed.

Subject to the preceding paragraph, where the infringement is found to be intentionally committed, the court may, upon request and on the basis of the severity of the infringement, award the damages greater than the loss suffered but not exceeding three (3) times of the proven loss.

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Marking of patent certificate number

The patent certificate number shall be marked on the patented article. If such marking cannot be fixed on the patented article, the patentee may make such marking on the labels or packaging, or make such marking in a distinct way sufficient to draw people’s attention. Where no patent marking is made, evidence shall be produced when claiming damages to prove that the infringer knows or has a reason to know that the said article is under patent protection.

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