Chapter 2 Invention Patent

Section 1: Patentability of inventions

Article 21 Definition
The term "invention" as used herein refers to any creation of technical concepts by utilizing the rules of nature.

Article 22 Novelty & industrial applicability
An invention which is industrially applicable and is free from any of the following conditions may obtain a patent therefor upon application in accordance with this Act:
1. Which, prior to applying for patent, has been published or put to public use; or
2. Which, prior to applying for patent, has become known to the public.
Where an invention is under either of the circumstances set forth in the preceding Paragraph due to any of the following causes, and a patent application has been filed within six months from the date of occurrence of fact of the foregoing causes, such invention shall be free from the restrictive conditions set forth in the preceding Paragraph:
1. Where the invention is created as a result of research or experiment;
2. Where the invention has been exhibited at an exhibition sponsored or approved by the government; or
3. Where the invention has been disclosed in an occasion not intended by the patent applicant.
An applicant claiming the application of the cause set forth in Item 1 or Item 2 of the preceding Paragraph shall indicate the facts and the relevant dates in his/her application and submit evidential documents within the time limit specified by the Patent Authority.
Notwithstanding the absence of the conditions set forth in Paragraph One of this Article, if the proposed invention can be easily accomplished by a person having ordinarily knowledge in the art based on prior art before the application for patent is filed, no invention patent should be granted for such invention under this act.

Article 23 Filed before published after
Where the contents of an invention claimed in a patent application are identical to the contents described in the specification or drawings submitted along with an application for invention or utility model patent that is filed prior to but laid-open or published after the filing of the present patent application, no invention patent may be granted to the invention, except that the applicant(s) of the present application is (are) the same applicant(s) of such prior invention or utility model patent application.

Article 24 Unpatantable subject matter
The following items shall not be granted an invention patent:
1. Animals, plants, and essentially biological processes for production of animals or plants, except the processes for producing microorganisms;
2. Diagnostic, therapeutic or surgical operation methods for the treatment of humans or animals;
3. An invention which is contrary to public order, morality or public health.

Section 2: Application

Article 25 Filing an application
The application for an invention patent shall be made by the person entitled to file the patent application by submitting to the Patent Authority a application, a specification, and necessary drawings.
Where the person entitled to file a patent application is an employer, assignee or heir, the name of the inventor shall be indicated in the application, and the document evidencing the employment, assignment or inheritance shall be submitted along with the application.
The filing date of the invention patent application shall be the day which the application, the specification and necessary drawings are fully submitted.
Where the specification and all necessary drawings submitted under the preceding Paragraph are written in a foreign language, and the Chinese translation thereof has been supplemented prior to date specified by the Patent Authority, the date on which the foreign language version of such documents are submitted shall be regarded as the filing date of such patent application. Failure to submit the Chinese translation thereof by or on the specified date shall cause the patent application to be dismissed provided, however, that if the Chinese translation has been supplemented prior to the execution of the dismissal, the date on which the Chinese translation is submitted shall be regarded as the filing date.

Article 26 Specification and drawings
The specification referred to in the preceding Article shall contain the title of invention, description of invention, abstract of invention, and scope of claims.
The description of invention shall contain a sufficiently clear and complete disclosure of contents of the invention so as to enable person skilled in the art to understand the contents of and to practice said invention.
The scope of claims shall indicate distinctly the invention for which the patent is claimed. Each claim shall be written in a concise manner and must be supported by the descriptions and drawings of the invention.
The manner for disclosing the description, the claims and the drawings of an invention shall be prescribed in the implementing Regulations of the Patent Act.

Article 27 Claiming foreign priority
A patent applicant, who has filed his/her first patent application legally in respect of an invention in a member of the World Trade Organization (hereinafter referred to as the "WTO") or in a foreign country which allows ROC nationals to claim priority based on reciprocity and has filed his/her patent application for the same invention in the ROC within twelve (12) months from the filing date of his/her first patent application in said foreign country, may claim a priority for his/her ROC application.
Subject to the provisions of the preceding Paragraph, in case an applicant claims for two or more priority rights in a single patent application, the beginning date for calculation the priority period shall be the day following the earliest priority date.
If the foreign applicant is a citizen of a non-member country of the WTO and his/her home country does not maintain a relation for mutual recognition of priority rights with the ROC but the applicant has a residence or business office in a member country of the WTO or in the territory of a reciprocal country, the applicant shall also be entitled to claim priority in accordance with the provisions set forth in Paragraph One of this Article.
For a patent application claiming priority, the priority date shall be used as the reference date in the examination of the patent requirements.

Article 28 Statement of foreign priority
An applicant claiming priority in accordance with the preceding Article shall, when applying for patent, simultaneously file a statement and declare in the written application the filing date and the application number of the corresponding foreign application as well as the foreign country in which the same application was filed.
The applicant shall, within four (4) months from the filing date, submit the documents issued by the government of the foreign country declared in the preceding Paragraph evidencing the acceptance of said foreign application.
Violation of the provisions set forth in the preceding two Paragraphs shall cause the deprivation of the priority right.

Article 29 Domestic priority
Where an applicant files a further application based on a prior invention application or utility model application filed by himself/herself in the ROC, he/she may claim for the priority right in respect of the invention or creation described in the specification or drawings submitted along with his/her prior patent application, except under the following circumstances:
1. Where a period of twelve (12) months has elapsed from the filing date of the prior patent application;
2. Where a claim for priority right has been made in accordance with the provisions of Article 27 or this Article in respect of the invention or creation described in the prior patent application;
3. Where the prior patent application has been divided into a divisional application in accordance with the provisions of Paragraph One, Article 33, or has been converted in accordance with the provisions of Article 102;
4. Where the examination decision has been made in respect of the prior patent application.
The prior patent application referred to in the preceding Paragraph shall be deemed having been withdrawn after 15 months from its filing date.
A priority claim in respect of a prior patent application may not be withdrawn after 15 months from the filing date of the prior application.
Where a later application filed with priority claim in accordance with Paragraph One of this Article is withdrawn within fifteen (15) months from the filing date of the prior application, the priority claim shall be deemed withdrawn at the same time.
Where an applicant claims two or more priority rights in a single application, the beginning date for calculation of the priority period shall be the day following the first priority date.
For a patent application claiming priority, the priority date shall be used as the reference date during the patentability examination.
A statement for claiming priority in accordance with Paragraph One under this Article shall be filed concurrently while filing a patent application, and the filing date and the application number of such prior patent application shall be indicated in the application. Failure of the applicant to file the statement or to indicate the filing date and the application number of the prior patent application shall cause the deprivation of priority.
The claimed priority date under this Article shall not be earlier than October 26, 2001.

Article 30 Deposition of biological materials
In applying for an invention patent involving any biological material or the utilization of any biological material, the applicant shall, no later than the filing date, deposit the biological material at a local deposit institute designated by the Patent Authority and shall indicate in the application the name of the deposit institute, and the date and the serial number of such deposit provided, however, that the deposit is not required if the biological material involved can be easily obtained by ordinarily skilled person in the relevant art to the biological material.
The applicant shall, within three (3) months from the filing date of the application, submit to the Patent Authority the document(s) evidencing the deposit. If such evidentiary documents are not submitted before the foregoing period , the deposit shall be deemed not having been effected.
In the event the biological material involved has been deposited, before filing the patent application, at a foreign deposit institution which is recognized by the Patent Authority and the fact of such deposit has been stated in the application, and the deposit certificates issued by both a designated local deposit institution and the foreign deposit institution have been submitted within the time limit specified in the preceding Paragraph, the requirement for deposit before filing the application as set forth in Paragraph One of this Article may be exempted.
Regulations governing the accepting conditions, the categories, the types, and the quantity of such biological materials to be deposited, the rates of the deposit fees, and other matters in connection with the depositing operation shall be prescribed by the Competent Authority.

Article 31 Double patenting
When two or more applications are filed for the same invention, only the application filed first may be granted an invention patent, except in the case where the priority date claimed by the later application is earlier than the filing date of the earlier application.
If the filing date and the priority date referred to in the preceding Paragraph are the same date, the applicants shall be requested to reach a compromise between themselves. If such compromise cannot be reached, none of the applicants shall be granted an invention patent. In case the applications are filed by the same applicant, the applicant shall be requested, by a notice, to select one of such applications for filing within a given time limit; and failure of the applicant to select within the time limit shall cause the dismissal of all such applications.
While the applicants involved are in the process of negotiating for a compromise, the Patent Authority may notify such applicants to submit the results of the negotiation within an appropriate period of time to be set by the Patent Authority. Failure to submit the negotiation results within the time limit shall be deemed a failure of negotiation.
Where an invention patent application and a utility model patent application are filed separately in respect of the same invention or creation, the provisions set forth in the preceding three (3) Paragraphs shall apply mutatis mutandis.

Article 32 Unity of invention
An application for a patent for invention shall be limited to one invention.
Two or more inventions belonging to a single general inventive concept may be filed as one application.

Article 33 Divisional applications
In the case of a patent application which substantially involves two or more inventions, the application may, upon notice given by the Patent Authority or the request by the applicant, be divided into two or more separate divisional applications.
The divisional applications set forth in the preceding Paragraph shall be filed before the re-examination decision on the original application is rendered. If divisional applications are accepted, the filing date of the original application shall still be taken as the filing date of the divisional applications, and the applicant shall remain entitled to claim priority, if any, and the Patent Authority shall proceed with the examination procedures left unfinished in the examination of the original application.

Article 34 Invalidation
When an invention patent is granted upon application filed by a person other than the person entitled to file such application, the filing date of the application filed by the person not entitled to file the application shall be taken as the filing date of the application filed by the person entitled to file the application, if the person entitled to file the patent application files an invalidation action against the patent application filed by the person not entitled to file the application within two (2) years from the publication date of the patent application in question, and files his/her own patent application within sixty (60) days from the day the invalidation decision becomes irrevocable.
No publication will be given in respect of the application filed in accordance with the provisions set forth in the preceding Paragraph by the person entitled to file the invention patent application.

Section 3: Examination and Re-examination

Article 35 Examiners
The Patent Authority shall designate patent examiner(s) to conduct substantive examination on an invention patent application.
The qualification of patent examiners shall be prescribed by a separate act.

Article 36 Applications cannot be laid-open
After receipt of the documents of an invention patent application, if the Patent Authority considers, through examination, that nothing is contrary to the formality requirements and should not be laid-open, the Patent Authority shall have such application laid-open after a period of eighteen (18) months from the filing date of such patent application.
The Patent Authority may advance the laying-open of a patent application at the request of the applicant.
Under any of the following circumstances, an invention patent application shall not be laid-open:
1. Where the patent application has been withdrawn within fifteen (15) months from the filing date of said application;
2. Where the contents of the invention involve the national defense secret or any other secret pertaining to national security; or
3. Where the contents of the invention are detrimental to morality or public health.
The period set forth in Paragraph One and the preceding Paragraph of this Article, if any priority is claimed, is calculated from the day following the priority date, or following the earliest priority date if two or more priority are claimed.

Article 37 Request for substantive examination
Any person may, within three (3) years from the filing date of an invention patent application, apply to the Patent Authority for a substantive examination.
If the divisional application under Paragraph One, Article 33 is filed, or an invention patent application is converted under Article 102, after the time frame set forth in the preceding Paragraph, the application for substantive examination may be filed within thirty (30) days from the filing date of the divisional applications or the filing date of the conversion application.
No substantive examination application filed under the preceding two Paragraphs may be withdrawn.
If substantive examination is not applied within the period specified in Paragraph One or Paragraph Two of this Article, the invention patent application shall be deemed withdrawn.

Article 38 Complimentary documents for substantive examination
When applying for substantive examination under the preceding Article, an application shall be submitted.
The Patent Authority shall post the fact of an application for substantive examination in the Patent Gazette.
Where the substantive examination application is filed by a person other than the applicant of the invention patent application concerned, the Patent Authority shall inform the applicant of said invention patent application of such fact.
Where a substantive examination application is filed by the applicant of an invention patent application pertaining to a biological material or a method for utilizing any biological material, a certificate of viability issued by the deposit institution concerned shall be submitted along with the application; whereas, if such substantive examination application is filed by a person other than the applicant of the invention patent application, the Patent Authority shall notify the applicant of the invention patent application to submit such a certificate of viability within three (3) months.

Article 39 Request for prioritized examination
After an invention patent application is laid-open, if any person other than the applicant of the invention patent application puts such invention to practice for commercial purposes, the Patent Authority may effect the examination on a priority basis upon application.
For filing the application under the preceding Paragraph, relevant evidential documents shall be submitted along with the application.

Article 40 Claim for pecuniary compensation
Where a person has received a written notification of the contents of an invention patent application from the applicant thereof after laying-open of such patent application and continues to put the invention to practice for commercial purpose in the interim after such notification and prior to the publication, the applicant of the invention patent application may, after the publication of his/her invention patent application, make a claim against said person for an appropriate pecuniary compensation.
The claim referred to in the preceding Paragraph may also be made against a person who knows that an invention patent application has been laid-open but still continues to put the invention to practice for commercial purpose prior to the publication of the application.
The right to claim provided for in the preceding two Paragraphs shall have no prejudice to the exercise of any other rights.
The right to claim for pecuniary compensation set forth in Paragraph One and Paragraph Two of this Article shall become extinguished if not exercised within two years from the date of publication of said invention patent application.

Article 41 Date of implementation
The provisions of the preceding five Articles shall be applicable only to the invention patent applications filed on or after October 26, 2002.

Article 42 Restrictions on examiners
Under any of the following circumstances, a patent examiner shall exclude from exercising his/her own initiative:
1. Where the patent examiner or his/her spouse is the patent applicant, or the patent attorney, or a partner of the patent attorney or a person having an employment relation with the patent attorney of the applicant of the patent to be examined;
2. Where the patent examiner is presently related to the patent applicant or the patent attorney of the patent application to be examined by consanguinity within the fourth degree or by affinity within the third degree;
3. Where the patent examiner or his/her spouse has the relation with the patent applicant as a joint obligee, joint obligor or debt-paying obligor in respect of the patent application to be examined;
4. Where the examiner is or was the statutory representative, the head or a member of the family of the applicant of the patent application to be examined;
5. Where the examiner is or was an attorney ad litem or assistant in litigation of the applicant of the patent application to be examined; or
6. Where the examiner is or was a witness, or an expert witness, or an opposition petitioner, or an invalidation petitioner of the present patent application.
Where an examiner should but did not withdraw from exercising his/her function, the Patent Authority may, ex officio or at request, revoke the measure he/she took and take another appropriate measure instead.

Article 43 Service of final decision
Upon completion of examination of a patent application, a written decision shall be rendered and issued to the applicant or his/her patent attorney.
When a patent application is found not patentable, the reasons therefor shall be given in the written decision of examination.
A written decision of examination shall bear the name of the patent examiner(s). This requirement shall also apply to any written decision of re-examination, opposition action, invalidation action and patent-term extension.

Article 44 Grounds for refusal to grant a patent application
Any invention patent application which is found to be contrary to the provisions set out in Articles 21 through 24; Article 26; Paragraph One, or Paragraph Two, Article 30; Article 31; Article 32; or Paragraph Four, Article 49 of this Act shall not be patented.

Article 45 Access to files of published patent applications Where the examination result reveals no reason to deny the patentability of an invention, such invention shall be patented, and the claims and the drawings disclosed in that patent application shall be published.
Any person may apply for access to the written decision of examination, specification, drawings, and the entire file and information in connection with a specific patent application which has been allowed and published so as to read or to make hand, photographic or reproduced copy of the relevant information thereof, except for the information which should be kept confidential by the Patent Authority in accordance with the act.

Article 46 Request for reexamination
In case of dissatisfaction with a rejection decision rendered for an invention patent application, the applicant may, within sixty (60) days from the date the rejection decision is served, apply for re-examination by submitting a statement of reasons. If the application is rejected on procedural grounds or on the ground of the ineligibility of the applicant, the applicant may directly appeal for an administrative remedy in accordance with the act.
If there is any reason to deny the patentability of an invention patent through the re-examination procedure, the Patent Authority shall, before rendering a re-examination decision, send to the applicant a notice requesting that a response be made within a specified time limit.

Article 47 Designation of examiner for reexamination
For re-examination, the Patent Authority shall designate an examiner who has not participated in the examination of the original patent application to conduct the re-examination and render a written decision.
The written re-examination decision shall be served to the applicant.

Article 48 Request from patent Authority
When examining an invention patent application, the Patent Authority may, ex officio or at a request, notify the patent applicant to do any of the following acts within a specified time limit:
1. To appear before the Patent Authority for an interview; or
2. To perform necessary experiment(s) or to supplement model(s) or sample(s).
The Patent Authority may, when necessary, visit the site or a designated place for inspection and observation of the experiments or models or samples as required under Item 2 of the preceding Paragraph.

Article 49 Supplement or Amendment
In the course of examining an invention patent application, the Patent Authority may, ex officio, notify a patent applicant to make a supplement or amendment to the specifications and/or drawings within a specified time limit.
A patent applicant may, within fifteen (15) months from the filing date of such patent application, make a supplement or amendment to the specifications and/or drawings. If the supplement or amendment to the specifications and/or drawings is filed after elapse of the fifteen (15) months, the application shall be laid-open as it was originally filed.
After fifteen (15) months from the filing date of the invention patent application, a patent applicant may make a supplement or amendment to the specification and/or drawings only on the dates or during the periods as specified below:
1. At the same time of filing an application for substantive examination;
2. Within three (3) months from the service date of a notice of substantive examination issued in respect of the patent application concerned, if the substantive examination application is filed by a person other than the patent applicant;
3. During the time limit for response as specified in a notice given by the Patent Authority prior to its written reasons for rejection of the patent application concerned; or
4. At the time of filing an application for re-examination, or during the period fixed for filing a supplemental statement of reasons for re-examination.
The contents of the supplement or amendment made under the preceding three Paragraphs shall not exceed the scope of the specification or drawing disclosed in the original patent application.
Where a claiming priority is made, the periods specified in Paragraph Two and Paragraph Three under this Article shall be calculated from the day following the priority date.

Article 50 Confidentiality
Where an invention is considered, in the process of examination, to be likely to affect the national security, the specification of such invention shall be referred to the Ministry of National Defense or the relevant national security authorities for their opinions. If it is deemed necessary to keep such invention confidential, the invention shall not be published, and the documents included in the patent application package shall be sealed and kept in a secret file not accessible to the public. In addition, a written decision to such effect shall be made and served to the patent applicant, his/her patent attorney and the inventor accordingly.
The patent applicant, his/her patent attorney and the inventor shall keep the confidentiality of the invention of the nature as described in the preceding Paragraph. Upon violation of this confidential clause by any of the aforesaid parties, the right to apply for patent for such invention shall be deemed to have been waived.
The confidential period shall last for one year from the date the written decision is served on the patent applicant and may be extended on a year-by-year basis. The Patent Authority shall, within one month prior to the expiry of the confidential period, consult with the Ministry of National Defense or the relevant national security authorities about the continuation of the confidential period. If the confidential requirement of a patent case is no longer necessary, such patent shall be published.
The Government shall make appropriate compensation for any damages to be sustained by the patent applicant during the confidential period.

Section 4: Patent Rights

Article 51 Term of invention patent
A patent application filed in respect of an invention is approved by a written decision shall be published only after the issue fee and the first year annuity have been paid by the applicant within three (3) months after the service of the aforesaid written decision; if the foregoing fees have not been paid upon expiry of the above-given deadline, no publication shall be made, and the patent right for said invention shall not exist ab initio,.
The granted patent rights shall being on the date of publication, and a patent certificate shall be issued thereto.
The term of an invention patent right shall ends with twenty (20) years from the filing date of the patent application.

Article 52 Extension of duration term
In the case of invention patents covering pharmaceuticals, agrichemicals, or processes for preparing the same, a patentee may apply for an extension of his/her patent term for two (2) to five (5) years, if, pursuant to other acts or regulations, a prior government approval must be secured to practice such patents, for which the processing exceeds two (2) years after the publication of the patents. Only one such extension shall be permitted provided, however, that the patent term extended shall not exceed the length of time required for obtaining an approval from the central government authority in charge of end enterprises. In case the length of time required for obtaining an approval exceeds five (5) years, the term of extension shall still be limited to five (5) years.
Any application for an extension of the term of a patent right must be filed with the Patent Authority by submitting a written application together with supporting evidence within three (3) months from the date of the first government approval involved provided, however, that no extension application shall be filed within six (6) months prior to the expiration of the original patent term.
To determine the term of extension of a patent under the preceding Paragraph, the Competent Authority shall take into consideration the impact of the extension on the health of nationals in general and shall prescribe the approving rules in conjunction with the central government authority in charge of the end enterprises concerned.

Article 53 Designation of examiner for patent term extension
The Patent Authority shall designate examiner(s) to examine an invention patent extension application and shall make written decision which shall be served on the patentee or his/her patent attorney.

Article 54 Invalidation of patent term extension
Under any of the following circumstances, any person may file an invalidation action together with relevant evidence with the Patent Authority against the term extension of an invention patent granted by the Patent Authority:
1. If it is not necessary to obtain a government approval for practicing the patented invention at issue;
2. If the patentee or his/her licensee has not obtained a government approval as required;
3. If the approved term of extension exceeds the length of time in which the patented invention can not be practiced;
4. If the patent extension application is filed by a person other than the patentee;
5. If the patent right is jointly owned by two or more persons, and the extension application is not filed in the name of all co-owners;
6. In case the application for extension was based on the time spent in conducting experiments or testing in a foreign country, the extended term allowed by the Patent Authority exceeds the duration recognized by the patent authority of such foreign country; or
7. The time required for obtaining an approval is less than two years.
If an invalidation action against the grant of a patent term extension has become irrevocably sustained, the extended patent term originally granted shall become non-existing ab initio. However, if such invalidation action is irrevocably sustained on the grounds listed in Item (3) or Item (6) of the preceding Paragraph, only the exceeding term shall be deemed non-existing.

Article 55 Revocation of patent term extension
When the Patent Authority acknowledges the existence of any of the events set forth in Paragraph One of the preceding Article, it may, ex officio, revoke the extended term of the invention patent right at issue.
When the revocation of the approved extension of the term of a patent right becomes irrevocable, the originally approved extension shall be deemed not in existence ab initio; however, if the irrevocable revocation is rendered as a result of violation of the provisions of Item 3 or Item 6 of Paragraph One of the preceding Article, the exceeding duration shall be deemed non-existing.

Article 56 Exclusive right
Unless otherwise provided for in this Act, the patentee of a patented article shall have the exclusive right to preclude other persons from manufacturing, making an offer for sale, selling, using, or importing for above purposes the patented article without his/her prior consent.
Unless otherwise provided for in this Act, the patentee of a patented process shall have the exclusive right to preclude others from using such process and using, selling or importing for above purposes the articles made through direct use of the said process without his/her prior consent.
The scope of an invention patent right shall be determined based on the claim(s) set forth in the specification of the invention. The descriptions and drawings of the invention may be used as reference when interpreting the scope of the claims in the patent application.

Article 57 Limitation on invention patent right
The effect of an invention patent right shall not extend to any of the following matters:
1. Where the invention is put into practice for research, educational or experimental purposes only, with no profit-seeking acts involved therein;
2. Where, prior to filing for patent, the invention has been used in this country, or where all necessary preparations have been completed for such purpose provided, however, that this provision shall not apply where knowledge of the manufacturing process was obtained from the patent applicant within six (6) months prior to applying for patent and the patent applicant has made a statement concerning the reservation of his/her patent right therein;
3. Where the article has already been in existence in this country prior to the filing of the patent application;
4. Where the article is simply a vehicle or a device thereof that passes the territory of this country;
5. Where, in the case of revocation of the patent right acquired by a person other than the one entitled thereto as a result of an invalidation action filed by the patentee, the licensee has, prior to the revocation of the patent involved, used the patent in good faith or completed all necessary preparations therefor in this country; and
6. Where the patented articles manufactured by the patentee or under the consent of the patentee are put to use or resold after the sale thereof. The aforesaid manufacture and sale are not limited to those committed in this country.
The user referred to in Items 2 and 5 of the preceding Paragraph shall confine his/her continued use of the invention to his/her original enterprise exclusively. The geographic areas in which sale can be made under Item 6 of the preceding Paragraph shall be determined based on the facts by the court.
The licensee of the patent right which has been revoked as a result of an invalidation action as referred to in Item 5 of the first Paragraph under this Article shall pay the patentee a reasonable amount of royalty from the date of receiving a written notification from the patentee, provided that the licensee continues to practice the patent after the revocation of the patent.

Article 58 Limitations on exclusive right
For medicines manufactured by concocting two or more medicines or the concocting process itself, the patent right shall not cover prescriptions made by physicians or the medicines prepared in accordance with such prescriptions.

Article 59 Effect of recordation of assignment, license and patent-related pledge
The assignment, trust or licensing made by the patentee of the patent right of an invention to another person to practice the invention, or the pledge created on the patent by the patentee shall not be asserted against any third party, unless it has been registered with the Patent Authority.

Article 60 Protection of assignee
An assignment or a licensing of an invention patent shall not take effect if the contract signed therefor contains any of the following circumstances that will give rise to unfair competition:
1. To prohibit or restrict the assignee from using any specific article or process not furnished by the assignor or licensor; or
2. To require that the assignee purchase products or raw materials of the assignor which is not under patent protection.

Article 61 Joint-ownership
In the case of the joint-ownership of an invention patent, other than the practice of the patent by the joint-owners themselves, the patent shall not be assigned or licensed to others for practice without the consent of all joint-owners. If, however, there is an agreement providing otherwise, such agreement shall govern.

Article 62 Limitation on Joint-ownership
A joint-owner of an invention patent shall not assign or entrust his/her share thereof to another person or create a pledge on the same patent, without the consent of all the other joint-owners.

Article 63 Prolongation of patent term due to war
An invention patentee who has suffered damages as a result of war between the ROC and a foreign country may apply for a prolongation of the term of his/her patent for five (5) to ten (10) years, and only one such prolongation shall be permitted; provided, however, that this provision shall not apply if the patentee is a national of the belligerent country.

Article 64 Correction of specification and drawings
An invention patentee may file an application for making amendment(s) to the contents of the specification and drawings only in respect of the following matters:
1. Narrowing the scope of the claims:
2. Correction of the error(s) made in the specification; or
3. Explanation of obscure description(s).
Any amendment to be made under the preceding Paragraph shall not exceed the scope of contents which were disclosed in the original specification or drawings while filing the patent application, and shall not substantially expand or alter the scope of the patent claims.
Upon the approval of the amendment(s), the Patent Authority shall publish the cause of such amendment(s) in the Patent Gazette.
The effect of the amendment(s) to the the specification and/or drawings shall, upon publication, be retroactive to the filing date of the patent application concerned.

Article 65 Limitations on disposition of patent right
An invention patentee shall not abandon his/her patent right or file any application as provided in the preceding Article without the consent of the licensee or the pledgee.

Article 66 Expiration of patent right
An invention patent right shall extinguish ipso facto under any of the following circumstances:
1. In the case of expiry on the duration of a patent right, from the day following the expiration;
2. In the case of death of the patentee without an heir, from the date the patent right accrues to the Treasury as provided for in Article 1,185 of the Civil Code;
3. In the case of the patentee's failure of effecting the payment of a patent annuity for the second year or any year thereafter within the grace period, from the day following the expiration of the original statutory period for such payment; except for the patent right to be reinstated under Paragraph Two, Article 17 of this Act; or
4. In the case of voluntary abandonment of a patent right, from the date of the patentee's written declaration to such effect.

Article 67 Revocation of patent right
Under any of the following circumstances, an invention patent right shall be revoked and the patent certificate issued thereto shall be recalled within a given time limit by the Patent Authority either by an invalidation action or ex officio, and if recalling fails, a public notice for revocation of said patent certificate shall be published:
1. If the invention is found in violation of the provisions of Paragraph One, Article 12, Articles 21 through 24, Article 26, Article 31 or Paragraph Four, Article 49 of this Act;
2. If the home country of the patentee does not accept the patent applications to be filed by nationals of the ROC; or
3. If the invention patentee is found being a person other than the person entitled to file the invention patent application.
Where an invalidation action is filed on the ground that the patent right in question is in violation of the provisions set out in Paragraph One, Article 12 of this Act or under the circumstance set forth in Item 3 of the preceding Paragraph, the petitioner shall be limited to an interested party; whereas, in any other cases, any person shall be entitled to file to the Patent Authority an invalidation action with evidences.
Any supplemental reason and evidence from the petitioner shall be filed within one month from the date the invalidation action is initiated provided, however, that any supplemental reason and/or evidence that is submitted prior to the conclusion rendered on examination of an invalidation action shall still be examined.
Once an invalidation action is dismissed after the examination, no person may file another invalidation action based on the same fact or the same evidence.

Article 68 Invalidation proceedings after
An interested party may institute an invalidation action after the patent has expired or extinguished ipso facto if he/she has reinstatable legitimate interests as a result of the revocation of the patent.

Article 69 Deadline of defense to invalidation
Upon receipt of a written petition for patent invalidation, the Patent Authority shall serve a duplicate of such written petition to the patentee of the patent challenged.
The patentee of the patent challenged shall, within one month after the service of the written petition, file a statement of defense, and the examination of the invalidation action shall proceed without further notice, if the patentee fails to file the statement of defense upon expiry of the said one-month deadline, except an extension application with good cause shown therein has been filed and approved prior to the deadline.

Article 70 Designation of examiner for invalidation
For the examination of an invalidation action, the Patent Authority shall designate a patent examiner who did not participate in the examination of the original patent application and shall require that the designated examiner make a written examination decision which shall be serviced on both of the patentee and the petitioner concerned.

Article 71 Invalidation process
In the process of examining a patent invalidation action, the Patent Authority shall, upon a request or ex officio, notify the patentee involved to take any of the following actions:
1. to appear before the Patent Authority for an interview;
2. to conduct necessary experiment, or to submit supplemental model(s) or sample(s); and
3. to make amendment(s) in accordance with the provisions set out in Paragraph One and Paragraph Two, Article 64 of this Act.
The Patent Authority may, when necessary, visit the site or a designated place for inspection and observation of the experiment, or the model(s) or sample(s) as required in Item 2 of the preceding Paragraph.
Where amendment(s) to the specification or drawings of a patented invention is (are) required under Item 3, Paragraph One of this Article, the Patent Authority shall give the petitioner a notice of such request.

Article 72 Applicability of other provisions
For filing an invalidation action against the invention patent term extension under Article 54 of this Act, the provisions set out in Paragraph Three and Paragraph Four of Article 67, and the preceding four Articles herein shall apply mutatis mutandis.
For revocation of a patent right ex officio under Article 67 of this Act, the provisions set out in the preceding three Articles shall apply mutatis mutandis.

Article 73 Situations rendering cancellation of patent right final
Under any of the following circumstances, the revocation of an invention patent right shall become irrevocable:
1. No administrative remedy has been sought in accordance with the act; and
2. Where an irrevocable decision on dismissal of the action instituted for administrative remedy is rendered.
The effect of an irrevocably-revoked invention patent right shall be deemed non-existent ab initio.

Article 74 Matters should be published
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 Register of patents
The Patent Authority shall establish and maintain a register of patent rights, in which the title of the patent rights granted, the term of each patent right, the changes in patent rights, and all other matters required by the act shall be registered.
The register of patent rights set forth in the preceding Paragraph may be made and maintained by electronic means and shall be made available to the public for reading and making handwritten, photographic or reproduced copies therefrom.

Section 5: Practicing

Article 76 Compulsory license
In order to cope with the national emergencies, or to make non-profit-seeking use of a patent for enhancement of public welfare, or in the case of an applicant's failure to reach a licensing agreement with the patentee concerned under reasonable commercial terms and conditions within a considerable period of time, the Patent Authority may, upon an application, grant a right of compulsory licensing to the applicant to put the patented invention into practice; provided that such practicing shall be restricted mainly to the purpose of satisfying the requirements of the domestic market. However, if the application for compulsory licensing of a patent right covers semiconductor technology, such application may be allowed only if the proposed practicing is purposed for a non-profit-seeking use contemplated to enhance the public welfare.
In the absence of the conditions set forth in the preceding Paragraph, the Patent Authority still may, upon an application, grant to the applicant a compulsory license to practice the patented invention in the event that the patentee has imposed restrictions on competition or has committed unfair competition, as confirmed by a judgment given by a court or a disposition made by the Fair Trade Commission of the Executive Yuan.
Upon receipt of a written application for such compulsory licensing, the Patent Authority shall send a duplicate copy thereof to the patentee, requesting that a response be filed within three (3) months. If no response is filed within the specified time limit, the Patent Authority may decide the matter at its own discretion.
The right of compulsory licensing shall not preclude other persons from obtaining the right to practice the same patented invention.
The grantee of the compulsory license shall pay to the patentee an appropriate compensation. In the case of dispute over the amount of such compensation, the amount shall be decided by the Patent Authority.
The compulsory license shall be transacted together with the business pertaining to the compulsorily licensing for assignment, trust, inheritance, licensing or pledge creation.
Upon extinguishment of the cause of compulsory licensing, the Patent Authority may terminate the compulsory license upon an application.

Article 77 Annulment of compulsory license
If the person who has been granted a right of compulsory licensing under the provisions of the preceding Article has acted contrary to the purposes of the compulsory licensing, the Patent Authority may, upon an application filed by the patentee or ex offocio, annul the compulsory license.

Article 78 Reinvention
The term "reinvention" as used herein shall mean an invention which is accomplished through use of the principal technical contents of an invention or a utility model created by another person.
The patentee of a reinvention shall not practice his/her patented invention without obtaining a prior consent from the patentee of the original invention.
Where a product manufactured in accordance with a patented manufacturing process is covered by a product patent granted to another person, the patentee of such manufacturing process patent shall not put his/her invention into practice without obtaining a prior consent of the patentee of the product patent.
The patentee of the reinvention patent and the patentee of the original invention patent, or the patentee of the manufacturing process patent and the patentee of the product patent, as referred to in the preceding two Paragraphs, may reach an agreement on cross licensing arrangement for practicing the inventions.
If the agreement on cross licensing arrangement set forth in the preceding Paragraph cannot be reached, the patentee of the reinvention patent and the patentee of the original invention patent, or the patentee of the manufacturing process patent and the patentee of the product patent may apply for compulsory licensing in accordance with Article 76 of this Act. However, such compulsory licensing application may not be filed by the patentee of the reinvention or the patentee of the manufacturing process patent unless the technology expressed by the reinvention or by the manufacturing process invention has important technical improvement(s) with considerable economic significance over the original invention or the product invention.
The compulsory license obtained by the patentee of a reinvention patent or the patentee of a manufacturing process patent shall be transacted together with the patent right of said patentee for assignment, trust, inheritance, licensing or pledge creation.

Article 79 Marking number of patent certificate
An invention patentee shall mark the serial number of patent certificate on his/her patented article or the packaging thereof, and may require that his/her licensee or the grantee of compulsory license do the same. In case of failure to affix such marking, no claim for damages shall be allowed, except in the case that the infringer has known, or should have known as proved by facts, the existence of the patent.

Section 6: Government Fees

Article 80 Patent fees
In respect of each application concerning invention patents, the applicant shall pay a fee at the time of filing the application.
For an allowed patent, the invention patentee shall pay an issue fee and annuities. In the case of an approval for an extension or prolongation of patent term, annuities shall still be paid during the extended or prolonged patent term.
The amount of the application fee, issue fee and annuities shall be prescribed by the Competent Authority.

Article 81 Time-limit of annuity payment
The annuity for an invention patent shall be payable commencing from the publication date. Payment of the first year annuity shall be made in accordance with the provision set out in Paragraph One, Article 51 hereof, while the payment of the second year annuity and the annuities thereafter shall be made prior to the expiration of each of the current patent years.
The annuity for several years may be paid at one time. Under such circumstance, if the annuity rate is adjusted upwardly, the patentee concerned will not be required to pay the deficit.

Article 82 Grace period for annuity payment from the second year
In case the annuity payable for the second year or each year thereafter due is not paid within the regulatory period for the annuity payment, it may be paid later within six (6) months after expiry of the said regulatory period provided, however, that the amount of late payment shall be twice as much as the regular amount of the annuity.

Article 83 Annuity deduction
Where a patentee is a natural person, school or a small and medium enterprise, he/it may file an application with the Patent Authority for a reduction or exemption of the patent annuity. Regulations governing the conditions, number of years, amount, and other matters of such reduction and exemption shall be prescribed by the Competent Authority.

Section 7: Indemnity for Damages and Litigation

Article 84 Remedies for infringement
In the event of infringement on an invention patent, the patentee may claim for damages and demand the removal of the infringement and the prevention of any threat of infringement.
An exclusive licensee may also make the claim or demand set forth in the preceding Paragraph, unless otherwise provided for in an agreement, and in such case, the provisions set out in the agreement shall prevail.
When an invention patentee or an exclusive licensee claims for damages pursuant to the preceding two Paragraphs, he/she may request for destruction of the infringing products or the raw materials or implements used in infringing the patent, or request for other necessary disposals.
When the inventor's right to indicate his/her name is infringed, he/she may request a ruling to indicate the inventor's name or otherwise to recover his/her reputation.
The right to claim provided in this Article shall become extinguished if not exercised within two (2) years from the time the patentee is aware of the infringement act and the obligator for the damages, or within ten (10) years from the time of the infringement act.

Article 85 Calculation of damage compensation
To claim damages in accordance with the preceding Article, any of the following options may be adopted for calculating of the amount of damages:
1. To claim in accordance with Article 216 of the Civil Code. A patentee may, however, take the balance derived by subtracting the profit earned through the practice of his/her patent after the existence of infringement from the profit normally expected through the practice of the same patent as the amount of the damages, provided that no proving method can be presented to justify the damages;
2. To claim based on the profit earned by the infringer as a result of his/her infringement act. The entire income derived from the sale of the infringing articles shall be deemed the infringer's profit, provided that the infringer is unable to produce proof to justify his/her costs or necessary expenses.
In addition to the provisions set forth in the preceding Paragraph, the patentee may claim separately for damages at a reasonable amount in case the business reputation of the patentee has been downgraded or injured as a result of the infringement.
Subject to the provisions of the preceding two Paragraphs, if the infringement is found to be an intentional act, the court may, after considering the details of the infringement, decide the compensation in an amount higher than the amount of damages estimated, but not more than triple damages.

Article 86 Impounding and disposition of infringing articles
Any article used in an act of patent infringement or produced by such an act may, upon the application of the injured party to the court, be provisionally seized to serve as the whole or a part of compensation for the damages as may be awarded by judgment.
When the injured party instituted an action claiming for damages under the preceding Article and applying for provisional seizure, the court shall allow procedural relief in accordance with the Code of Civil Procedure.

Article 87 Presumption of infringement; rebuttal evidence
Where an article which is made by using a patented manufacturing process has never been seen in this country or outside of the country before the filing of a patent application for the manufacturing process, an article identical thereto made by another person shall be inferred as having been manufactured by using said manufacturing process.
The inference made under the preceding Paragraph may be overturned by presentation of counter-evidence. A proof made by the defendant that the process used by him in manufacturing the article at issue is different from the patented process shall be deemed as presentation of counter-evidence. The legal rights and interests in the manufacture and trade secret, as disclosed by the defendant in producing such counter-evidence, shall be fully protected.

Article 88 Service of court judgment
With regard to a litigation involving an invention patent, the court shall send to the Patent Authority one original copy of the judgment rendered by it.

Article 89 Judgment should be published in newspaper
The injured party may, after an irrevocable favorable judgment is rendered, request the court issue a ruling for publishing in a newspaper the judgment in full or in part, at the expenses of the losing party.

Article 90 Suspending of trial process
For any civil proceedings pending in a court in connection with an invention patent, the court may suspend the trial process until a decision on the patent application, invalidation, or revocation action related thereto has become irrevocable.
When rendering a ruling for suspending the trial proceedings in accordance with the provisions set out in the preceding Paragraph, the court shall look into the legitimacy of the cause of the invalidation action.
Where an invalidation action instituted involves the trial proceedings of the patent infringement actsuit, the Patent Authority shall give the priority to the examination of the invalidation action.

Article 91 Limitation on infringement actions by foreign patentees
A non-recognized foreign juristic person or entity may institute a civil action in respect of the matters governed by this Act, provided, however, that the nationals or entities of the ROC are entitled to such rights in said foreign country under a treaty, or the national acts, ordinances or customary practices of said foreign country. A patent protection agreement between a ROC entity or organization and a foreign entity or organization and duly approved by the Competent Authority shall have the same effect.

Article 92 Tribunal and infringement assessment
The court may set up a professional tribunal or designate specific persons to handle invention patent litigation cases.
The Judicial Yuan may appoint specific professional institution(s) to perform the expert verification work as required in patent infringement case(s).
A court which accepts and handles a actsuit pertaining to an invention patent may engage the professional institution(s) appointed under the preceding Paragraph to perform the expert verification work as required.