Chapter II
Invention Patent
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Section 1: Patentability
Article
21 Definition
of invention
"Invention"
means the creation of technical ideas,
utilizing the laws of nature.
Article
22 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 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.
Where an invention can be easily made
by a person ordinarily
skilled in the
art based
on prior art, a patent shall not
be granted for such an invention
notwithstanding the preceding paragraph.
Any of the following events shall not be deemed as
one prescribed in
Paragraph 1 or the preceding paragraph, which may preclude the
grant
of an invention patent,
provided that
the concerned patent application is
filed within six months from the date
of the event's occurrence:
1. the
invention concerned was publicly
disclosed as a result of conducting a
test;
2. the invention was disclosed in a publication;
3. the invention
was displayed at an exhibition held
or recognized by the
Government; or
4. the invention
was disclosed without the consent of
the applicant.
An
applicant claiming exemption as set forth in Item 1 through Item 3 of the
preceding paragraph shall state
the fact and the relevant date in the
patent
application at the time of filing and submit evidentiary
documents within
the time limit
specified by the Specific Patent
Agency.
Article
23
Deemed as lack of novelty
A
patent shall not be granted invention where such invention claimed
in a
patent application
is identical with an invention or utility model disclosed
in the description, claim(s)
or drawing(s) of an earlier-filed invention
or
utility model patent application which is laid open or
published after the
filing of the later-filed patent application; however, this shall not
apply
where the applicant of the later-filed
patent application is the
same as the
applicant of the earlier-filed invention or utility model patent application.
An invention patent
shall not be granted in respect of any of the following:
1. animals,
plants, and essential biological processes for the production of
animals or plants, except processes for producing
microorganisms;
2. diagnostic, therapeutic and surgical methods for the treatment of humans
or
animals;
3. inventions contrary to public order or morality.
Section
2: Application
Article 25
Filing date
An application for an invention
patent shall be filed with the Specific
Patent
Agency by the person entitled to applying for patent by
submitting a
request, a description, claim(s), an abstract, and the necessary
drawing(s).
The
filing date of an invention patent application shall be the date on
which
the request, description,
claim(s),
and the necessary drawing(s)
are submitted
in full.
Where an applicant
does not submit a description, claim(s)
and the necessary
drawing(s) in Chinese
at the time of filing, but in a foreign language, and
where the Chinese translation
for the said documents is submitted within the
time limit specified by the Specific
Patent Agency, the filing date shall be
the date on which the
foreign language version were
originally submitted.
Where the Chinese translation is not
submitted within the specified
time
limit as stated in the preceding
paragraph, the patent application shall
be
dismissed; however, if
the Chinese
translation
is filed prior to the
dismissal decision is received,
the date on which the Chinese
translation
is filed shall be regarded as the filing date, and the
foreign language
version
shall be deemed not having been submitted.
A description shall 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 can 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.
Manner of disclosure for description, claim(s), abstract, and drawing(s) shall
be prescribed in the
Enforcement Rules of the Patent Act.
Article 27 Deposit
of biological material
When filing
an invention patent application involving a biological
material
or utilization of
a
biological material, the applicant shall, no later than the
filing date,
make a deposit of
the biological material with a domestic
depository designated by the Specific Patent Agency. No deposit
is
required if the biological
material
involved can be easily obtained by
a person ordinarily skilled in the art.
An
applicant shall, within four months after
the filing date of his/her
patent
application, submit to the Specific Patent Agency a certificate
of deposit,
indicating the depository, date
of deposit and
depository number. If such
document is not submitted within the time limit,
the deposit shall be
deemed not having been made.
Where
priority is claimed under Article 28, the
time limit set
forth in the
preceding paragraph shall
be sixteen
months after
the priority date.
In the event that, prior to filing the invention
patent application, the
biological material concerned
had
been deposited
with a foreign
depository recognized by the Specific Patent Agency, and where the
certificates of
deposits issued by
the designated domestic depository
and the foreign depository have been submitted
within the time limit
prescribed
in either
the second paragraph or
the preceding paragraph,
the applicant
is exempted
from the requirement of making deposit no
later than the filing date, as set forth in the first paragraph .
If an applicant has deposited
the biological material concerned with
a
depository designated
by a foreign country with which the ROC
recognizes the
effects of deposits based
on reciprocity, and if the
applicant has submitted the certificate(s) of deposit issued
by said
foreign depository
within the time limit prescribed in Paragraph 2 or
Paragraph 3, the applicant is exempted from the requirement of
making a deposit in the ROC.
The competent authority shall enact
regulations on the requirements
for
accession, types, forms, and quantities of deposits of biological materials,
deposit fees, and other matters in connection with making deposits set forth
in Paragraph 1.
Article 28
Priority claim under WTO membership, etc.
Where an applicant has duly filed his/her first patent application in a foreign
country, which reciprocally allows ROC nationals to claim patent priority,
or with any member of the World Trade Organization (WTO), the applicant
may claim priority in respect of his/her ROC patent application if the ROC
patent application for the same invention is filed within twelve months from
the filing date of the said first patent application.
Where an applicant claims two or more
priorities in respect of a patent
application, the period referred to in the preceding paragraph shall be on the
basis of earliest priority date.
If a foreign applicant is a citizen of a non-member of the WTO and his/her
home country does not mutually recognize priority with the ROC, but the
applicant has domicile or business establishment in any member 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 1.
For a patent application filed
with priority, examination on its patentability
shall be based on the priority date.
Article
29
Claim of priority
When claiming priority in accordance with the preceding Article, an
applicant shall simultaneously make a
declaration with respect to the
following when filing
his/her patent
application:
1. the
filing date of the first patent application;
2. the
country or
member of WTO in or for which the first patent application
was filed;
3. the
application number of the first patent application.
Within sixteen months from 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
Paragraph 2, the priority claim shall be deemed not having
been made.
Where, unintentionally, no
priority claim is made at the time of filing his/her
patent application or priority
claim is deemed not having been made as
prescribed in the preceding paragraph,
the applicant may, within sixteen
months after the earliest priority date, apply for
reinstatement of priority
claim, pay the required fee and undertake actions
set forth in Paragraphs
1 and 2.
Article 30
Priority claim based on earlier application
Where an applicant, based on his/her earlier invention or utility
model
patent application in the ROC,
files a subsequent patent application,
he/she 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 months has elapsed from 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 to
Paragraph 1
of Article 34 or Paragraph 1
of Article 107, or a patent
application converted pursuant to Paragraph 1
of Article 108;
4. where
the earlier patent application is for an invention patent
application
that has been
published or has been irrevocably rejected;
5. where
the earlier patent application is for a utility model patent
application
that has been
published or has been irrevocably rejected;
6.
where the
earlier
patent application has been withdrawn or dismissed.
The earlier patent application referred to in the preceding paragraph shall be
deemed having been withdrawn upon an expiry of fifteen
months from its
filing date.
Priority claimed shall not be withdrawn upon an expiry of fifteen months
from the filing date of the earlier patent application.
For a subsequent patent application filed with priority claim in accordance
with Paragraph 1 of this Article, which has been withdrawn within fifteen
months from the filing date of the earlier application, the priority claim thus
made shall be deemed having 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 under this
Article,
the filing date and the application number of the earlier patent
application
shall be declared at the time of filing. If the above-mentioned
declaration is not made, priority claim shall be deemed not having been
made.
Article 31 Principle of first-to-file
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 time limit; failure to make a selection within the time
limit shall result in rejection of all such patent
applications.
While the applicants concerned
are in the process of reaching an agreement,
the Specific Patent Agency shall require these applicants to report the results
of the negotiation within an appropriate time
limit. If the said report is not
submitted within the specified time limit, it shall be
deemed that an
agreement
is not reached.
Where an invention patent application and
a utility model patent application
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
circumstance stipulated in Article 32.
Article 32 One creation applied for invention patent and utility model patent
Where an applicant files an
invention patent application and a utility model
patent application for
the same creation on the same date, if the utility model
patent application has been granted before a decision of admission is issued
on the invention patent
application, the Specific Patent Agency shall notify
the applicant to select one patent application within a specified time limit.
The invention patent application shall not be granted if the applicant fails to
make the selection
within the specified time limit.
Where the applicant select the invention patent application according to the
provision set forth in the preceding paragraph, the utility model patent right
shall be deemed non-existent ab initio.
The invention patent application shall not be granted if the utility model
patent right has extinguished or has been invalidated before a decision is
issued on the invention
patent application.
Article
33
Unity
An application for an invention patent shall relate to one invention.
Two or more inventions so linked as to
form a single general inventive
concept may be filed as
one application.
Article
34 Division
of application
For a patent application which substantially contains two
or more inventions,
the said patent
application may, upon notice
by the Specific Patent Agency
or upon request by the applicant, be divided into two or more
divisional
applications.
A divisional application shall be filed
within any of the following time limit:
1.
before
a reexamination
decision on the original patent application is
rendered;
2.
within
thirty days from the date on which an approval decision for the
original patent application
has been served.
However, it
shall not be
filed
if a
reexamination decision has
been rendered.
The
filing date of the divisional patent application shall be deemed
to have
the filing date of the original application.
Where the priority claim has been
made, the applicant can claim priority for
the divisional patent application.
The divisional patent
application shall not
extend beyond the scope of
content of the description, claim(s), or drawing(s) of the original patent
application as filed.
For the divisional patent
application filed
in accordance with Subparagraph
1of Paragraph 2, the
examination
thereof shall be continued from the
examination procedure of the original patent
application.
For the divisional
patent application
filed in accordance with Subparagraph
2 of Paragraph 2, the
examination
thereof shall be continued from the
examination procedure
that was left before the original patent application
was
approved; the original patent
application shall
be published with the
claim(s) and drawing(s) as approved.
Article 35 Invalidation request filed by genuine holder of right to apply for a
patent
Where an invalidation request is filed against a granted patent by the person
entitled to apply for a patent or by the joint owner(s) of the right to apply for a
patent within two years from the published date of the patent concerned in
accordance with Item 3, Paragraph 1 of Article 71, and where the said person
or joint owner(s) newly file(s) a patent application for the same invention
within two months from the day on which the invalidation decision revoking
the patent has become final and binding, the filing date of the newly filed patent
application shall be deemed to have the filing date of the invalidated patent.
A patent application newly
filed in accordance with the preceding paragraph
shall not be
published again.
Section
3: Examination
and Reexamination
Article 36 Assignment of examiner for examination
The Specific Patent Agency shall assign an examiner to conduct the substantive
examination of an invention patent application.
Article 37 Early publication of patent application
After receiving the filing documents for an invention patent application, if,
after examination, the Specific Patent Agency finds no violation of the
formality requirements and no event that may lead the patent application
being not laid open, the Specific Patent Agency shall have such patent
application laid open after eighteen months from the filing date of such
patent application.
The Specific Patent Agency may advance the laying-open of a patent
application upon the request of the applicant.
An invention patent application shall not be laid open under any of the
following circumstances:
1. where it is withdrawn within fifteen months from its filing date;
2. where it involves national defense secrets or any other secrets pertaining to
national security;
3. where it is contrary to public order or morality.
Where priority is claimed, the calculation of the time limit set forth in
Paragraph 1 and the preceding paragraph shall be on the basis of the priority
date; where two or more priorities are claimed, the time limit calculation shall
be on the basis of the earliest priority date.
Article 38 Request for substantive examination
A request to the Specific Patent Agency for substantive examination of an
invention patent application shall be made by any person within three years
from the filing date of the patent application.
In the case of an invention patent application which was divided under
Paragraph 1 of Article 34 or was converted under Paragraph 1 of Article 108,
if the time limit set forth in the preceding paragraph has lapsed, a request for
substantive examination can be filed no later than thirty days following the
application for division or conversion.
A request for substantive examination under the preceding two paragraphs
shall not be withdrawn.
Where a request for substantive examination is not filed within the time limit
prescribed in Paragraph 1 or Paragraph 2, the invention patent application
shall be deemed to have been withdrawn.
Article 39 Request Procedure for substantive examination
A request for
substantive examination under the preceding Article shall be
submitted.
The Specific Patent Agency shall publish the fact regarding a request for
substantive examination in the Patent Gazette.
Where the substantive examination is requested by a person other than the
applicant, the Specific Patent Agency shall notify the applicant of the
invention patent application of such fact.
Article 40 Prioritized examination of invention patent application
Where, after the laying-open of an invention patent application, a person
other than the applicant has exploited the invention commercially, the
Specific Patent Agency may, upon request, conduct prioritized examination.
Relevant evidentiary documents shall be submitted when filing a request
under the preceding paragraph.
Article 41 Effect of the laying open of application
After
the laying-open of an invention patent application, where the applicant
has
given a
written notice to a person indicating the content of the invention
claimed in
the patent application,
the applicant may, after the publication of
the said patent application, claim appropriate
compensation against the said
person if he/she continues to exploit the invention
commercially after
receiving
the notice and prior to the publication of the said patent
application.
A claim referred to in the preceding paragraph can also be made where a
person who knows that an invention patent application has been laid open
but continues to exploit the invention commercially prior to publication of the
patent application.
The right to claim compensation as provided in the preceding two paragraphs
does not affect the exercise of other rights.
The right to claim compensation set forth in Paragraph 2 shall be ceased if it is
not exercised within two years from the date of publication of the said
invention patent.
Article 42 Interview and inspection in examination of application
When examining an invention
patent application, the Specific Patent Agency
may, upon request or on its own
initiative, notify the applicant to conduct
any of the following actions within a
specified time limit:
1. to appear before the Specific Patent Agency for an interview;
2. to perform necessary experiment(s) or submit model(s) or sample(s).
Where experiment(s) or model(s) or sample(s) is(are) performed or submitted
as stated in Subparagraph 2 of the preceding paragraph, the Specific Patent
Agency may, when necessary, visit the site or a designated place for inspection.
Article
43 Amendment
during examination; final notice
Unless
otherwise provided for in this Act, when examining an invention
patent application, 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 limit.
Except for correction of translation errors, any amendment shall not extend
beyond the scope of content of the description, claim(s), or drawing(s) as
filed.
Where
the Specific Patent Agency issues a notice in
accordance with
Paragraph 2
of Article 46, a
patent applicant can
only make amendments
within the time limit specified in the
notice.
After the Specific Patent Agency has issued a
notice under the preceding
paragraph, as it deems
necessary, they may issue a final notice. After a final
notice is issued, as to amendment
of claim(s), the patent applicant shall only
conduct the amendment as follows within the time
limit specified in the
said notice:
1. to delete claim(s);
2. to restrict the scope of claim(s);
3. to correct the errors;
4. to clarify
the ambiguous statement.
In case of a violation of the provisions in the preceding two paragraphs, the
Specific Patent Agency shall state the reasons and issue a decision
accordingly.
The Specific Patent
Agency may issue a final notice
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;
3. where the content of the
notice issued for a divisional application is same
as that of a notice issued for
other divisional application(s).
Article
44
Foreign language documents
Where a patent applicant submits a
description, claim(s),
and drawings
prepared in a foreign language under Paragraph 3 of Article
25, such
foreign language documents shall
not be amended.
The Chinese translation
submitted under Paragraph 3
of Article 25
shall not
extend beyond
the scope
of content of the original foreign
language
documents as filed.
Any correction of translation errors of the Chinese
version stated in the
preceding paragraph shall not extend beyond the scope of
content of the
original foreign language documents as filed.
Article 45
Decision of examination
Upon completion of examination of an
invention patent application, a
written decision shall be rendered and served on the
applicant.
When a patent application is determined to
be unpatentable, the reason(s)
shall be given in the written decision of
examination.
A
written decision of examination shall bear the name of the patent examiner.
This requirement
shall also apply to written decisions for reexamination,
amendment after grant,
invalidation, patent term extension and invalidation
against patent term extension.
Article
46
Grounds for rejection decision
When an invention patent
application 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 of Article 34,
Paragraph 2 of Article 43,
Paragraphs 2 and 3 of Article 44 or Paragraph 3 of Article 108, a
rejection
decision shall be rendered.
The
Specific Patent Agency shall notify the applicant and ask him /her to file
a response within
a time limit before it renders a decision in accordance with
the
preceding paragraph.
If the applicant fails to make a response before the
time limit, a decision of rejection
shall be rendered accordingly.
Article 47 Publication of patented invention and application for viewing
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 reviewing, 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.
Article
48
Reexamination
Where an applicant of an
invention patent application is dissatisfied with a
rejection decision rendered for
his/her patent application, he/she may
apply for a reexamination with
reason(s) within two months after the date
on which the rejection decision is served. If
the patent application is not
accepted or dismissed for formality defects or on the
ground of ineligibility
of the applicant, the applicant may directly file administrative remedy
actions in accordance with acts.
Article 49
Amendment during reexamination
Where a rejection decision is preceded by a notice of rejection as set
forth in
Paragraph 2 of Article 46, the applicant shall still be allowed to amend
his/her description, claims, or drawing(s) during the reexamination stage.
Where a final notice has been issued before the
rejection decision is rendered
for a patent application, any amendment made during
the reexamination
stage shall still be subject to limitations set forth in each item of
Paragraph
4 of Article 43. The above shall not apply to reexamination,
if the Specific
Patent
Agency finds that the final notice issued
in the original examination
procedure was improper.
The
Specific Patent Agency may issue a final notice under any of the
following circumstances:
1.
where the reason(s) for reexamination still involves unpatentable event(s);
2.
where the amendment(s) made during the reexamination stage still lead to
unpatentable event(s);
3. where an amendment made in accordance with the preceding paragraph
violates Paragraph 4 of Article 43.
Article 50 Assignment of examiner for reexamination
At the time of reexamination, the Specific Patent Agency shall assign an
examiner, who did not participate in the original examination stage of the
concerned patent application, to conduct the reexamination and render a
written decision served to the applicant.
Article 51
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, his/her patent agent and the inventor shall keep the
invention confidential as described in the preceding paragraph; the right
to apply for a patent for such invention shall be deemed having been
abandoned if there is any violation of the confidentiality requirement.
The confidentiality period shall last for one year from the date on which the
decision is served on the applicant, and such period may be extended on an
annual basis. One month prior to the expiry of the confidentiality limit, the
Specific Patent
Agency shall consult with the
Ministry of National Defense
or relevant national security authorities and, if confidentiality is no longer
required, such patent
application shall be laid open.
Where an invention prescribed in Paragraph 1 is approved and if
confidentiality is deemed unnecessary for such patent
application, the
Specific Patent Agency shall notify the applicant to pay the patent certificate
fee and the first year
patent annuity within three months, and shall publish
the grant of the invention patent after receiving such fees. If the said fees are
not paid prior to the time limit stated above, no publication shall be made.
The Government shall pay a considerable compensation sustained
by the
applicant during the confidentiality period.
Section
4: Patent Rights
Article
52
Payment of fees and publication
For an invention patent application 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
months from the
date of receiving the
allowance decision; if the fees are
not paid before the expiration of time limit stated above, no patent grant
publication shall be made.
Patent rights granted to an invention patent
application shall start from the
date of patent grant publication, and a patent certificate shall be
issued
thereto.
The term of an invention patent shall expire after a period of twenty years
from the filing date of the application.
Where applicant unintentionally failed to pay the required fees within the
time limit set forth in
Paragraph 1 of this Article or Paragraph 4 of the
preceding Article, the applicant may pay the patent certificate
fee and two
times the patent annuities of the first year within six months after the time
limit expired, in which case
the patent grant shall be published by the
Specific Patent Agency.
Article
53 Extension
of patent term
For an invention patent directed to a pharmaceutical or agrichemical(s), or
the manufacturing process thereof, of which
the exploit needs to obtain a
regulatory approval pursuant to other acts or regulations, if the regulatory
approval is obtained after the publication of the concerned
invention
patent, the patentee may
apply for one and only one extension of the
patent term of said invention patent based on the first regulatory
approval. Said regulatory approval is only allowed to be
used once for
seeking patent term extension.
The extension of
the patent term approved under the preceding paragraph
shall not exceed the length of time when the patent cannot be exploited
because of absence of
the regulatory approval concerned from the central
government authorities in charge of the business. If the time needed to
obtain said
regulatory approval exceeds five years, the granted patent
term extension shall be five years.
The term "pharmaceutical"
set forth in Paragraph 1 does not include any
veterinary drug.
When applying
for patent term extension under the first paragraph, a written
request and
evidentiary documents must be submitted to the Specific Patent
Agency within three months after obtaining the first regulatory approval;
no
request for patent term extension shall be filed within six months prior to
the end of the original patent term.
When making a decision on an application for patent term
extension, the
Specific
Patent Agency shall take into consideration the impact on public
health and shall coordinate with the central competent authority in charge
to enact the regulations concerned.
Where a request for patent term extension is filed
under the preceding
Article, the patent term shall be deemed having been extended if the
Specific Patent Agency has not issued a decision before the original
patent
term expires.
However, where
such request for patent
term extension is not allowed, the
patent term shall expire
at the original expiration date.
Article
55
Assignment of examiner for extension application
The
Specific Patent Agency shall assign
an examiner to examine a request
for patent term extension, issue a written
decision and serve it on the
patentee.
Article
56
Scope of patent term extension
The scope
of a patent, of which a term extension has been granted, is
limited to the active
ingredients and use
stated in the regulatory
approval
concerned.
Article
57
Invalidation of patent term extension
Any person may request for
invalidation of the granted patent term
extension to the Specific
Patent Agency, together with evidentiary
documents, under any of the following circumstances:
1. where it is unnecessary to obtain the regulatory
approval to exploit
the invention patent concerned;
2. where neither
the patentee nor his/her licensee has obtained the
regulatory approval;
3. where the granted term of extension exceeds the period during which
the patent cannot be exploited;
4. where the applicant of the patent term extension
is not the patentee;
5. where the regulatory approval of extension request is not the first
approval, or an extension
based on the said regulatory approval
concerned has been done;
6. where the request for extension is based on the time spent in conducting
trials or tests in a foreign country,
the extended term granted by the
Specific Patent Agency exceeds the period recognized by the foreign
patent
authority;
7. where the pharmaceuticals involved in the
granted patent term extension
are veterinary
drugs.
If invalidation of the patent term extension is irrevocably sustained, the
granted patent term extension shall be deemed non-existent ab initio.
However, if such invalidation is irrevocably sustained on the ground
listed in
Subparagraph 3 or Subparagraph 6 of the preceding paragraph,
only the exceeding period of the extension shall be deemed non-existent.
Article 58
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;
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 when interpreting the claim(s).
The
abstract shall not be used for the purpose of interpreting claim(s).
Article 59
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 a person learning of the invention from the applicant for
patent
within six months and the applicant has made a statement reserving his
right in
the event of 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 entitled to apply for a patent is
revoked as a result of an invalidation filed by
the patentee, acts done by
a licensee who has, prior to patent invalidation, been
exploiting the
invention in good faith or making all the necessary preparations to do such
an act ;
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;
7. where, after an invention patent
is ceased pursuant to Subparagraph 3,
Paragraph 1 of Article 70 and before it is
reinstated and published under
Paragraph 2 of Article 70 of this Act, acts done by a person
who has been
exploiting the invention in good faith or making all the necessary
preparations to do such an act.
The person exploiting the invention
as stated in Subparagraphs 3, 5, and 7
of the preceding paragraph, may
continue to exploit the invention within
the original business purpose.
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 as of the
date of receiving a written notice from the
patentee.
Article
60 Limitations of patent right:
research and trials of pharmaceuticals
The
effects of the
patent right shall not extend to research and trials,
including their practical requirements, necessary for obtaining registration
and market
approval of drugs under the Pharmaceutical Affairs Act or
obtaining market approval of pharmaceuticals from a foreign country.
Article 61
Limitations of patent right: dispensation of medicines
The effects of the
patent right for the invention of medicines to be
manufactured by mixing two or more medicines or for the invention of
a
process thereof, shall not be affected
against the preparing medicines in
accordance with a prescription from a physician, or the medicines so
prepared.
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 his/her patent for the
purpose of securing multiple creditors’
rights, the ranks of these pledges
shall be determined according to the order of their
recordation.
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-license contract shall have no locus standi against any party unless
it is recorded
with the Specific Patent Agency.
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 owners.
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 other
joint owners.
Where a joint owner of a patent right has abandoned his/her own share,
this share shall be vested in other joint owner(s).
Where the patentee has suffered loss as a result of a war between the ROC
and a foreign country, he/she may apply for patent term prolongation of
his/her patent for five to ten years; only one such prolongation shall be
permitted. However, if the patent is owned by a national from the foreign
country in war with the ROC, an application for patent term prolongation
shall not be allowed.
Article
67
Amendment of granted patent
When applying for amending the description, claim(s) or drawings of an
invention patent, the
patentee shall only conduct the
amendment as follows:
1. to delete claim(s);
2. to restrict the scope of claim(s);
3. to correct
errors or incorrect translations;
4. to clarify
ambiguous statement.
Except for correction of incorrect
translations, an amendment shall not extend
beyond the scope of content of the description, claim(s), or drawing(s) as
filed.
For an
invention patent application filed by submitting the description,
claim(s), and drawings prepared in a foreign language pursuant to
Paragraph 3 of Article 25, a correction of incorrect
translations shall not
extend beyond the scope of disclosure in the foreign language documents
as
filed.
An amendment shall not substantially enlarge or alter the scope of the
claim(s) as published.
Article 68
Examination of amendment
The Specific Patent Agency shall designate patent
examiner(s) to conduct
examination of patent
amendment, render a decision and serve it to the
patentee, except for an amendment filed in accordance with the
provisions
set forth in Article 79.
After
approving the amendment, the Specific Patent Agency shall publish
the result therefor.
Once a description, claim(s) and drawing(s) is amended and published,
such amendment shall take effect retroactively from the filing date.
Article 69
Restriction of abandonment or amendment of patent right
A patentee shall not abandon
his/her patent right, or apply for an
amendment as stated in Subparagraph 1 or
Subparagraph 2, Paragraph
1 of Article 67
without the consent of the licensee or pledgee .
Where a patent
right is jointly owned, no joint owner may apply for
amendment as stated
in Subparagraph 1 or 2, Paragraph 1 of Article 67
without the consent from all
the joint
owners.
Article 70
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 second year annuity or any subsequent patent annuity is not
paid within the payment time limit, the patent right shall become
extinguished after the expiration of the original due payment date;
4. where the patentee abandoned the patent, the patent right shall
extinguished from the date the patentee wrote a declaration.
Where the applicant unintentionally failed to pay a patent annuity within
the late payment time set forth in Paragraph 1 of Article 94, the patentee
may apply for reinstatement of the patent rights within one year from the
due
date for effecting the payment
by paying triple the amount originally
due, and the Specific Patent Agency shall publish with respect to the above.
Article
71
Grounds for invalidation
Any
person may request for invalidation against an invention patent with
the
Specific Patent
Agency under any of the following circumstances:
1. where there
is a violation of Articles 21 to 24, Article 26, Article 31,
Paragraphs 1
and 3 of Article
32, Paragraph 4 of Article 34, Paragraph 2
of
Article 43, Paragraphs
2 and 3 of Article 44, Paragraphs 2 to 4
of Article
67, or Paragraph 3 of Article 108 of this Act;
2. where
the home country of the patentee does not accept the patent
applications filed
by nationals of the ROC; and
3. where
there is a violation of Paragraph 1 of Article 12, or where the
invention patentee is not entitled to file the invention patent
application.
An
invalidation request based on Subparagraph 3 of the preceding
paragraph shall
only be
filed by the interested party.
With respect to ground(s)
of an invalidation request against an invention
patent, the provisions in effect at the time of the said patent approved shall
govern. However, if an invalidation
request is filed based on the ground(s)
under Paragraph 4 of Article 34, Paragraph 2 of Article
43, Paragraph 2 and
Paragraph 4 of Article 67 or Paragraph 3 of Article 108, the provisions in
effect at the time of filing the said
request shall govern.
Article 72
Invalidation against extinguished patent
Where the interested party possesses recoverable legal interests due to
the
invalidation of a patent, such interested party may request for
invalidation
after the said patent has become extinguished ipso facto.
Article
73
Invalidation request
An invalidation request shall be submitted with a statement reason(s), and
accompanied by evidence.
Where a patent contains more than one claim, an
invalidation request may
be filed for each claim.
An invalidation statement shall not be modified
or added after filing, but
it can be narrowed.
An invalidation
requester may supplement invalidation reasons or
evidence
within one month
after the date of filing the said request;
however,
supplementary reason(s) and/or
evidence submitted prior to rendering a
decision shall still be examined.
Article
74
Invalidation proceedings
Upon receipt of
the request stated in the preceding
Article, the Specific
Patent Agency shall send a copy of such request to the patentee.
Within one month
after sending the copy of the request, a response shall be
submitted by the
patentee. If
the patentee fails to submit such response, the
invalidation proceedings
shall be conducted directly, unless the patentee
has requested for extension
with reason(s) beforehand and such extension
has been approved.
The
Specific Patent Agency may
conduct invalidation proceedings directly
if the supplementary reason(s) or evidence by the invalidation requester is
likely to delay the proceedings
or if
the fact and evidence submitted has
been sufficiently clear.
Article 75
Principle of Ex officio
When conducting an invalidation proceedings, the Specific Patent Agency
may, ex
officio, examine the reason(s) and evidence not submitted by the
invalidation
requester if the said reason(s) and evidence are within the
scope of the
invalidation statement, and notify the patentee to submit a
response within a time limit. The invalidation proceedings shall be
conducted directly if the
patentee fails to submit a response within the
time limit.
Article
76
Interview and inspection in invalidation proceedings
When
conducting an 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 time limit:
1. to appear at the Specific Patent Agency for interview;
2. to perform necessary experiment(s) or submit model(s) or sample(s).
Where experiment(s) or model(s) or sample(s) performed as stated in
Subparagraph 2 of the preceding paragraph, the Specific Patent Agency
may, when necessary, visit the site or a designated place for inspection.
Article
77
Joint proceedings of invalidation and amendment
If, during the invalidation
proceedings, a request for amendment is filed,
the said proceedings and amendment
shall be conducted jointly, then
decisions concerned shall be rendered jointly as
well. If the Specific Patent
Agency
considers the said amendment approvable, it shall send
a copy of
the amended description, claim(s) and/or drawings to the invalidation
requester.
Where there is more than one request for amendment, the earlier
amendment shall be deemed to have been withdrawn.
Article
78
Joint
proceedings of multiple invalidation requests
Where there
is more than one invalidation request filed against the same
patent, when necessary,
the invalidation proceedings of the said requests
may be conducted jointly by the
Specific Patent Agency.
Where the invalidation proceedings have been conducted jointly
pursuant to
the preceding paragraph, decisions concerned may also be
rendered jointly.
Article
79
Assignment
of examiner for invalidation
When
conducting invalidation proceedings, the Specific Patent Agency
shall designate patent examiners, render a
decision and serve the same to
the patentee and the invalidation requester.
Decision on an invalidation request shall
be rendered on a claim-by-claim
basis.
Article
80
Restriction of withdrawal of invalidation
An
invalidation request may be withdrawn by the requester before a decision
concerned has
been rendered. However, if the patentee has already
submitted a response, such withdrawal shall be
consented from the patentee.
The Specific Patent Agency shall notify the patentee of the withdrawal of an
invalidation request. If the patentee raises no objection within ten days after
the notice has been served, it shall be deemed that the patentee has agreed
to such withdrawal.
Article
81
Principle of ne bis in idem
Under any of the following circumstances, any person shall not be allowed to
separately request for invalidation against the same patent based on the
same facts and evidence:
1. where another invalidation request
filed based on the same facts and
evidence has been considered groundless by a decision;
2. where new evidence is submitted with the Intellectual Property Court
pursuant to Article 33 of the
Intellectual Property Case Adjudication Act,
and considered groundless by a
judgment.
Article
82
Decision of invalidation
Where an invalidation request against an invention patent is considered well
grounded, the patent right shall be invalidated; such invalidation may be
made on a claim-by-claim basis.
Invalidation 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;
2. where
administrative remedy proceedings are filed but dismissed finally
and bindingly.
Where an invention patent is invalidated finally and bindingly, the effect
of
patent right shall be deemed never to have existed.
Article 83
Procedures to be applied mutatis mutandis
to invalidation against
patent term
extension
With respect to an invalidation request filed against
patent term extension
of an invention patent under Paragraph 1 of Article 57 of this Act, the
provisions in this Act with respect to invalidation requests against
invention patents shall apply mutatis mutandis.
Article 84
Publication in the Patent Gazettes
An invention patent with respect to grant, change, extension,
prolongation,
assignment, trust, licensing, compulsory licensing, revocation,
extinguishment, establishment of a pledge, invalidation decisions, as well
as other matters which
should be published are to be published in the
Patent Gazettes.
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
in electronic means and shall be made available to the public for reading,
transcribing, photographing, or photocopying.
Article
86
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 by
electronic means; the
commencement
date thereof shall be decided by the Specific Patent Agency.
Section
5: Compulsory
Licensing
Article
87
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 as
needed, and notify the patentee as soon as reasonably practicable.
Under
any of the following circumstances, for which a compulsory patent
licensing is necessary,
the Specific Patent Agency may, upon request, grant
compulsory licensing of a
patent:
1.
where the patented invention is exploited non-commercially for
enhancement of
public interest;
2.
where a later invention or utility model patent cannot be exploited without
infringing
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;
3.
where a patentee has committed acts restricting competition or has
committed
unfair
competition acts, which have been determined via a
judgment issued by a court or
a decision issued by the Fair Trade
Commission of the Executive Yuan.
Applying
for compulsory license of a patent covering semiconductor
technology shall be
filed based on the grounds set forth in Subparagraphs
1 and 3 of the preceding paragraph.
Applying
for compulsory license of a patent in accordance with
Subparagraphs 1 through
2 of Paragraph 2 may only be permitted if the
requestor for compulsory license has
made efforts to obtained authorization
from the right holder on reasonable commercial
terms and conditions, and
that such efforts have not been successful within a
reasonable limit of time.
Request for compulsory licensing of a patent in accordance with
Subparagraph 2 of Paragraph 2, the owner of the prior patent may
propose
reasonable terms and conditions and seek grant of compulsory
license of the later
patent owned by the requestor.
Article
88
Procedure and decision of compulsory license
After
receiving an application for compulsory license as filed in accordance
with Paragraph
2 of the preceding Article or Article 90, the Specific Patent
Agency shall notify
the patentee concerned and require the patentee to
submit a statement of defense within
a designated time limit. If no statement
of defense is submitted within the designated
time limit, the examination
of the compulsory license request shall be proceeded
accordingly.
The
exploitation under a compulsory license shall be authorized
predominantly for
the supply
of the domestic market. The above
shall not
apply to compulsory license granted
in accordance with Subparagraph 3,
Paragraph 2 of the preceding Article.
A
decision on a request for compulsory license shall be made in writing, and
shall indicate
the reasons, scope, duration, and the required remuneration.
A
compulsory license shall not affect the exercise of patent right by the
patentee concerned.
The
right granted under compulsory license shall not be assigned, entrusted,
inherited, licensed
or pledged except for the following circumstances:
1.
where a compulsory license is granted in accordance with Subparagraph
1 or
Subparagraph 3, Paragraph 2 of the preceding Article, it is assigned,
entrusted, inherited, licensed or pledged with the business involving the
exploitation of
the patent;
2.
where a compulsory license is granted in accordance with Subparagraph 2
of the preceding paragraph or Paragraph 5 of the preceding Article, it is
assigned,
entrusted, inherited, licensed or pledged with the patent owned
by the licensee.
Article
89
Termination of compulsory license
Where
a compulsory license granted in accordance with Paragraph 1 of
Article
87 is considered
no longer necessary by the central government
authority in charge of the business,
the Specific Patent Agency shall
terminate the compulsory license upon a notice
from the central
government authorities in
charge of the business.
The
Specific Patent Agency may, upon request, terminate the grant of
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 ;
3.
where the licensee fails to pay the remuneration as determined by the
Specific
Patent
Agency.
Article
90
Compulsory
licensing of pharmaceuticals: grounds; procedures
For purposes of assisting countries
with insufficient or no manufacturing
capacities in pharmaceutical sector to
obtain pharmaceutical product(s)
needed in treating HIV/AIDS, tuberculosis,
malaria and other epidemics,
the Specific Patent Agency shall, upon request, grant
compulsory license
for the requestor to exploit a patent concerned for the purpose of producing
such pharmaceutical products(s) and its export to eligible importing
countries.
A request for compulsory license
filed in accordance with the preceding
paragraph may only be permitted 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, when filing a
request according to Paragraph 1, shall submit
evidentiary documents 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 evidentiary document(s) is (are) not needed if
the
importing country is a least-developed country;
3. the required pharmaceutical
product(s) is (are) not patented in the
importing country, or where the pharmaceutical
product(s) is(are)
patented in its territory,
it has granted or intends 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.
If the importing country is not a
WTO member, but is a least-developed
country or is a country with insufficient or
no manufacturing capacities in
the pharmaceutical sector, when filing a request for
compulsory license
according to Paragraph 1, the requestor shall submit evidentiary
documents
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;
2.
stating that it agrees to prevent re-exportation of the pharmaceutical
product(s)
needed.
Article
91
Compulsory licensing of pharmaceuticals: export; remuneration
Pharmaceutical product(s) produced
under compulsory license in accordance
with 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 reported 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 license granted in
accordance with the preceding Article
shall be marked with the basis of the
licensing on the external packaging thereof in
accordance with the direction
specified by the Specific Patent Agency; the packaging,
coloring or shaping
of the pharmaceutical product(s) produced under compulsory license
shall
be sufficiently distinguishable from pharmaceutical product(s) produced by
the
patentee or his/her licensee(s).
A 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 involving 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 of such
compulsory license shall post on a
website the quantities, name(s) and destination(s) of such
pharmaceutical
product(s), as well as distinguishing features of the pharmaceutical
product(s).
Inspection and
registration of the pharmaceutical product(s) produced and
exported under compulsory
licensing in accordance with the preceding
Article shall not be bound by the
Paragraph 2, Article 40ter of the
Pharmaceutical Affairs Act.
Section
6: Payment
of 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.
The annuity for an invention patent shall be paid commencing from the
publication date. Payment of the first year annuity shall be made in accordance
with the provision set out in Paragraph 1, Article 52 hereof, while the payment
of the second year annuity and the annuities thereafter shall be made prior to
the expiration of each patent payment year.
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
94
Addition of annuity
If the annuity for the second or any subsequent payment year is not paid
within the original time limit, a late payment can be made within six months
from the original due date with a specified percentage addition.
Payment of additional annuities based on the specified percentage as
stated in the preceding paragraph means additional annuities will be needed
on a monthly basis depending on the time limit elapsed from the original
For every month that has elapsed, an additional fee at a ratio of 20% is needed
with a maximum of additional fee which is same as the amount originally due.
The elapsed time limit from one day to one month shall be deemed one
Article
95
Reduction of annuity
Where the patentee of an invention patent is a
natural person, school or small
and
medium enterprise, the patentee may apply with the Specific Patent
Agency for a
reduction
of patent annuities.
Section
7: Damages and Action
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 the case of
infringement of an invention patent with intent or due to
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 infringing the patent, 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 to have his/her name indicated or take other measures
necessary to
recover his/her reputation.
The rights to claim provided for in Paragraph 2
and the preceding paragraph
shall become extinguished if not exercised
within two years from the date on
which the patentee become aware of the damage and
the person liable for
damages. This right shall also become extinguished if it is
not exercised
within ten years from the time of infringement.
Damages claimed in accordance with the
preceding Article may be
calculated according to any of the following methods:
1. the method provided in Article 216 of the
Civil Code; patentee may claim
damages based on the amount of the balance derived by
subtracting the
profit earned through exploiting the patent after
infringement from the
profit
normally expected through exploiting the same patent,
if no method
of proof can be produced to prove the damage suffered;
2. the profit earned by the infringer as a
result of patent infringement;
3. the equivalent amount of royalty that may be
collected from exploiting
the invention
patent under licensing.
The patent certificate number of a patent 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 other persons’ 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 the said article is
under patent protection.
Where an article made by using a patented manufacturing process which is
unknown within and outside of this country before the filing of a patent
application for the manufacturing process, an article identical thereto made
by another
person shall be presumed as having been manufactured by using
said manufacturing
process.
The presumption made under the preceding
paragraph may be rebutted by
producing proof to the contrary. 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 proof to the contrary. The legitimate
rights and interests with respect to the manufacturing and trade secrets
disclosed
by the defendant when producing evidence, shall be fully
protected.
A court shall forward to the Specific Patent
Agency an original copy of a
judgment issued thereby for a patent litigation
case involving an invention
patent.
Where an invalidation request involves trial of
infringement litigation case,
the Specific Patent Agency shall give priority to such
invalidation
proceedings.
An unrecognized foreign juridical person or
organization may file civil suits
in respect of the matters governed by this Act.
A court may form specialized tribunal(s) or assign specific staff members
to
take charge of invention patent litigation cases.
The Judicial Yuan may appoint specialized institution(s) to conduct patent
infringement assessments.
A court hearing a litigation pertaining to an
invention patent may request the
specialized institution appointed
according to the preceding paragraph to
conduct patent infringement assessment.