With the growing high-tech industry, Taiwan is rising to become a global technology and innovation powerhouse, and many foreign corporations are showing interest in applying for IP rights protections in Taiwan.

The new Taiwan Patent Act and examination guidelines, implemented on 1 November 2019, introduced many changes to the Taiwanese patent system, especially on invalidation and post-grant amendments. This article aims at providing strategies and advice for FICPI members regarding invalidation proceedings in Taiwan.

  1. Considerable changes to the Taiwanese patent system
  • Limiting the time period for a party to submit responses, new reasons or evidences in an invalidation proceeding (New Patent Act Art. 73)

[The old Act] An invalidation requester shall provide reasons or evidences within 1 month after filing an invalidation action. Even if the reasons or evidences are provided after the deadline, the Taiwan Intellectual Property Office (TIPO) will still consider the submitted information before the decision is rendered. The invalidation requester therefore would keep providing new reasons or evidences, and the patentee would also keep providing responses.

[The new Act] In order to avoid prolonging the invalidation process, the new Act and Examination Guidelines restrict the time frame for submission of reasons and evidences. Late-filed documents will not be taken into consideration.

The invalidation requester can provide new evidences or reasons under the circumstances below:

  1. Within 3 months after filing the invalidation request;
  2. Within 1 month after receiving the notification from TIPO which asks the requester to provide a response to the post-grant amendments made by the patentee; or
  3. Within 1 month after receiving the notification from the TIPO which asks the requester to submit comments in order to conduct the investigation of evidence or to exercise the power of inquiry.

The new Act also limits the time period for a patentee to provide a response. The patentee shall provide a response within 1 month after having been served with the “invalidation request form and the grounds or evidence” provided by the requester within 3 months.

As further set forth in the New Examination Guidelines, when necessary, the IPO may notify the patentee to provide a response within 3 months after the filing date of a request for invalidation action, and the patentee shall reply within 1 month.

  • Limiting the time period for a party to apply for post-grant amendments in an invalidation proceeding (New Patent Act Art. 74)

[The old Act] The old Act does not restrict the time frame in which a patentee may make post-grant amendments in the invalidation proceeding.

            [The new Act] The patentee shall file a request for post-grant amendments during the following time periods:

  1. Within 1 month after having been served with a copy of the invalidation request form;
  2. Within 1 month after the TIPO notified the patentee to provide a supplementary response; or
  3. Within 1 month after having been served with the rejection notification of post-grant amendments from the TIPO.

The new Act and Examination Guidelines stipulate that a request for post-grant amendments can only be filed within the above time periods. If a litigation case involving the patent is pending, there is no restriction of time limit to apply for post-grant amendments.

  • How to act under the new Taiwan Patent Act
  • Strategies for challenging the validity of patents by invalidation

According to the new Act, there is a strict restriction on the time frame for an invalidation requester to file evidences. Hence the invalidation requester shall formulate well-developed strategies for invalidation before filing a request, and shall prepare enough relevant evidences to prevent failure to submit the evidences within the specified time period.

If the invalidation requester fails to file new evidences within the specified time period, the requester can file a new invalidation request separately, or file the new evidences in an administrative action in accordance with Paragraph 1, Article 33 of the Taiwan Intellectual Property Case Adjudication Act which specifies, “in an administrative action concerning cancellation or revocation of a registered trademark or patent, the Intellectual Property Court shall take into account any new evidence submitted on the same grounds for the cancellation or revocation prior to the end of the oral argument”. The new invalidation request be filed while the previous one is still pending.

Besides, the TIPO would not serve the patentee’s response to the invalidation requester on its own initiative. In order to learn the contents of the patentee’s response timely and speed up the preparation of grounds of invalidation, the requester should regularly request for reviewing and copying the file wrapper of the patent.

  • Strategies for defense against invalidation and litigation

According to the new Act, the TIPO will not examine the evidences and reasons submitted by the invalidation requester later than the specified time period of 3 months after the filing date of a request for invalidation.

In practice, the TIPO would serve the request form for invalidation action to the patentee at 0.5 months after the date of receipt of request form. The patentee can then strategically request a 1-month extension for response, which means the patentee can provide the response within 2 months after having been served with the notification. As a result, the invalidation requester will not be able to file new evidences in a timely way within 3 months after the invalidation action was filed.

In addition, under the new Act, the time period for the patentee to apply for post-grant amendments is limited during an invalidation proceeding. Post-grant amendments must be filed within specified time periods unless an infringement litigation involving the patent is pending, which is unlike the old Act where a patentee can apply for post-grant amendments as one desires. The best way for the patentee to maintain the patent is to assess the condition much more carefully, and grasp the opportunity for applying for post-grant amendments in order to provide a well-formulated response to the invalidation and propose allowable post-grant amendments.

Given that there is no invalidation proceeding, a patentee can apply for post-grant amendments at any time during the term of patent. Also, when there is no pending invalidation or infringement litigation involving the patent, post-grant amendments are much more likely to be permitted by the TIPO. Accordingly, before filing a civil action for infringement, it is advised that the patentee should first conduct a patent search and patentability assessment to determine whether to apply for post-grant amendments to avoid prior art. The reason for this is to prevent the circumstance where an invalidation requester asserts that the post-grant amendments have substantially altered the scope of the claims during litigation proceedings, thus leading to a possible refusal of the post-grant amendment application from the TIPO.

FICPI’s view and involvement

FICPI’s worldwide membership and focus on independent expert IP attorneys ensures members benefit from insights and counsel from a wide perspective, and can use the FICPI member directory to identify trusted FICPI members in their own country and other regions in which they do business, and the FICPI LinkedIn Group to discuss issues in a closed environment.

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