Chapter 2 Invention Patent |
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. |
Article 24 Statutory exclusion
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. |
Article 26 Disclosure
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.
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 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.
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. |
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. |
Article 54 Deemed as extended
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. |
Article 62 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 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. |
Article 63 Sub-license
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.
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. |
Article 64 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 owners. |
Article 65 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 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). |
Article 66 Prolongation of patent term
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
The grant, alteration, extension, prolongation, assignment, trust, licensing, compulsory licensing, revocation, extinguishments or pledging of an invention patent right as well as other matters which should be published, the Patent Authority shall effect such publication in the Patent Gazette. |
Article 75 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
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.
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
An invention patentee shall mark the serial number of patent certificate on his/her patented article or the packaging thereof, and may require that his/her licensee or the grantee of compulsory license do the same. In case of failure to affix such marking, no claim for damages shall be allowed, except in the case that the infringer has known, or should have known as proved by facts, the existence of the patent.
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. |
Article 85 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 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 |
Article 92 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. |
Article 93 Time limit on payment of annuity
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 due date. 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 month. |
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 |
Article 96 Right to claim in the event of patent right infringement
With respect to each request for patent-related matters, the requestor shall pay fees at the time of filing.
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. |
Article 97 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. |
Article 97-1 Border measures: detention request, security and counter security
A patentee may request Customs to detain the imported articles that are suspected of infringing the patent right(s).
The request referred to in the preceding paragraph shall be made in wring, accompanied by the preliminary showing of the facts of infringement and a security amounting to the duty-paid price of the imported articles, as assessed by Customs, or equivalent assurance.
Customs shall immediately notify the detention requester upon acceptance of the request. Having deemed such request to be in compliance with the preceding paragraph, Customs shall notify in writing both the detention requester and the owner of the detained articles when carrying out the detention.
By providing a security amounting to two times the security or equivalent assurance referred to in Paragraph 2, the owner of the detained articles may request Customs to repeal the detention and to follow the procedures under applicable regulations governing customs clearance of imported articles.
Customs may allow the detention requester or the owner of the detained articles to examine the detained articles, provided that confidential information protection of the detained articles is not compromised.
If the detention requester obtains a court judgment deeming that the detained articles infringe the patent right(s), the owner of the detained articles shall be liable for relevant costs including demurrage, warehousing, loading, and unloading. |
Article 97-2 Border measures: repeal of detention and subsequent procedures
Customs shall repeal the detention in case of any of the following:
1. customs has not been notified by the detention requester, within twelve (12) days following the date of Customs' acceptance of the request, that a litigation claiming that the detained articles infringe the patent right(s) has been initiated in accordance with Article 96;
2. a litigation initiated by the detention requester claiming that the detained articles infringe the patent right(s) has been dismissed by a final and binding court judgment;
3. a court of law in a final and binding judgment has held that the detained articles do not infringe patent right(s);
4. the detention requester has requested the repeal of detention; or
5. the condition stated in Paragraph 4 of the preceding article has been met.
If necessary, Customs may extend the time period as prescribed in Subparagraph 1 of the preceding paragraph by another twelve (12) days.
Customs repealing the detention in accordance with Paragraph 1 shall follow the procedures under applicable regulations governing customs clearance of imported articles.
If the detention is repealed in accordance with Subparagraphs 1 through 4 of Paragraph 1, the detention requester shall be liable for relevant costs including demurrage, warehousing, loading, and unloading. |
Article 97-3 Border measures: compensation and return of security
If a court of law in a final and binding judgment has held that the detained articles do not infringe the patent right(s), the detention requester shall be liable to compensate the owner of the detained articles for the loss incurred from such detention or from providing the security as prescribed in Paragraph 4 of Article 97-1.
The detention requester enjoys the same right as a pledgee regarding the security as prescribed in Paragraph 4 of Article 97-1; the owner of the detained articles enjoys the same right as a pledgee regarding the security as prescribed in Paragraph 2 of Article 97-1. Notwithstanding the foregoing, the relevant costs including demurrage, warehousing, loading, and unloading as prescribed in Paragraph 4 of the preceding article and Paragraph 6 of Article 97-1 shall be paid prior to compensation for the loss suffered by the detention requester or the owner of the detained articles.
In case of any of the following, Customs shall, upon request from the detention requester, return the security as prescribed in Paragraph 2 of Article 97-1:
1. the security is no longer required as a final and binding court judgment has been rendered in favor of the detention requester or the detention requester has reached a settlement with the owner of the detained articles;
2. where the owner of the detained articles has suffered loss due to a repeal of detention in accordance with Subparagraphs 1 through 4, Paragraph 1 of the preceding article, or where a final and binding court judgment has been rendered in favor of the owner of the detained articles, the detention requester proves that the owner of the detained articles has been notified to exercise the right within a specified time period of no less than twenty (20) days but the owner of the detained articles has yet to do so within the said period; or
3. the owner of the detained articles has agreed upon such return.
In case of any of the following, Customs shall, upon request from the owner of the detained articles, return the security as prescribed in Paragraph 4 of Article 97-1:
1. the security is no longer required as the detention has been repealed in accordance with Subparagraphs 1 through 4, Paragraph 1 of the preceding article, or a settlement has been reached between the owner of the detained articles and the detention requester;
2. where a final and binding court judgment has been rendered in favor of the detention requester, the owner of the detained articles proves that the detention requester has been notified to exercise the right within a specified time period of no less than twenty (20) days but the detention requester has yet to do so within the said period; or
3. the detention requester has agreed upon such return. |
Article 97-4 Border measures: formulation of procedural regulations
The competent authority shall, in coordination with the Ministry of Finance, formulate regulations governing the request of detention, repeal of detention, examination of detained articles, the procedures involving payment, provision, and return of security or assurance, provision of required documents, and other requirements, as prescribed in the preceding three (3) articles. |
Article 98 Marking of patent certificate number
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. |
Article 99 Presumption of manufacture process used
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. |
Article 100 Forwarding an original copy of judgment
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. |
Article 101 Acceleration of invalidation proceedings
Where an invalidation request involves trial of infringement litigation case, the Specific Patent Agency shall give priority to such invalidation proceedings. |
Article 102 Unrecognized foreign juridical person or organization
An unrecognized foreign juridical person or organization may file civil suits in respect of the matters governed by this Act. |
Article 103 Patent infringement assessment
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. |
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