Transitional provisions: no revival of extinguished patent right

If any of the following events exists at the time of the implementation of November 29, 2011, amendment of this Act, Paragraph 4 of Article 52, Paragraph 2 of Article 70, Paragraph 4 of Article 52 applicable mutatis mutandis under Article 120, Paragraph 2 of Article 70 applicable mutatis mutandis under Article 120, Paragraph 4 of Article 52 applicable mutatis mutandis under Paragraph 1 of Article 142, and Paragraph 2 of Article 70 applicable mutatis mutandis under Paragraph 1 of Article 142 shall not apply:

1. where, at the time of the said implementation, the time period for payment of annuity has expired and the patent concerned has become non-existent ab initio pursuant to the former Paragraph 1 of Article 51, Paragraph 1 of Article 101, or Paragraph 1 of Article 113 of this Act; or
2. where, at the time of the said implementation, a patent has become extinguished pursuant to the former Subparagraph 3 of Article 66, Subparagraph 3 of Article 66 applicable mutatis mutandis under Article 108, or Subparagraph 3 of Article 66 applicable mutatis mutandis under Paragraph 1, Article 129 of this Act.

Acceleration of invalidation proceedings

Where an invalidation action involves the trial of an infringement litigation case, the Specific Patent Agency shall give priority to such invalidation proceedings.

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Conversion of application

Where a patent application originally filed for invention or design is converted into a patent application for utility model, or where a patent application originally filed for utility model is converted into a patent application for invention, the filing date of the original patent application shall be deemed to be the filing date of the converted patent application.

A request for patent conversion shall not be made under any of the following circumstances:

1. after a written decision allowing the original patent application is served;
2. two (2) months after the date on which a written decision rejecting the original patent application for invention or design is served; or
3. thirty (30) days after the date on which a written decision rejecting the original patent application for utility model is served. "A converted 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.

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Grant of patent; publication "A claimed utility model shall be patented if, after formality examination, there is no event negating its patentability, and the claim(s) and the drawing(s) thereof shall be published.

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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.

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Unity; design for a set of articles "An application for a design patent shall relate to one design. "Two or more articles belonging to the same class and are customarily sold or used together may be filed as one design. "A patent application for design shall indicate the article to which the design is applied.

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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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Recordation to have locus standi against a third party: transference of patent right

The assigning, entrusting, licensing, or establishing of a pledge on a patent right by the patentee shall have no locus standi against any third party unless it is recorded with the Specific Patent Agency.

The license as stated in the preceding paragraph may be an exclusive license or a non-exclusive license.

An exclusive licensee shall, within the scope of the license granted, exclude the patentee and third parties from exploiting the patented invention.

Where a patentee establishes multiple pledges on the same patent for the purpose of securing multiple creditors’ rights, the ranks of these pledges shall be determined according to the order of their recordation.

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Prolongation of patent term

Where an invention patentee has suffered loss as a result of a war between ROC and a foreign country, the patentee may request for patent term prolongation for five (5) to ten (10) years; only one such prolongation shall be permitted. However, if the patent is owned by a national from the foreign country in war with ROC, a request therefor shall not be allowed.

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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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