In September 2024, the Taiwan IP Office announced a draft amendment to the Patent Act (the “draft”). This draft was formulated in response to the rapid growth of emerging digital industries and the increasing diversification of image design utilizing digital technologies. After reviewing a number of counterpart regimes in other major jurisdictions as well as latest practices of domestic design rules, the TIPO proposed the draft for public review and comment. Being the first version, it is likely that the draft will undergo revisions after receiving feedback from the IP community and stakeholders.

  The draft concerns five main topics, set forth as follows.

  Image Subject Matter

  The draft expands the scope of subject matter for image design in light of the advancement of digital technology. Since 2020, computer generated icons and graphic user interfaces have been eligible for patents in Taiwan. The current law states that, for a design patent to be granted to an image, that image must be applied to an article. In particular, the draft proposes to remove the article requirement in an effort to provide more possibilities for cutting-edge technologies such as the metaverse, augmented reality and virtual reality.[1] Corresponding to this change, the practice of image design is defined as (1) making, using, selling, offering for sale, or providing the image through the Internet; or (2) making, selling, offering for sale, distributing, or importing the storage medium incorporating said image for the foregoing purposes.[2]

  Multiple Embodiments

  Taiwan currently observes the one-design-per-application rule. Namely, an application for a design patent may only be filed for one embodiment. For an application containing more than one embodiment, the applicant is currently advised to either delete the others or file for a divisional application to cover the same. As per the draft, more freedom will be given to the applicant to decide the number of embodiments in one application. Specifically, the same person having two or more similar designs can file them together in one application.[3] In response to this relaxation of the rules, acceptable types of post-grant amendments for designs shall encompass correction of errors or translations, clarification of unclear descriptions, and deletion of one or more designs.[4] However, the deletion of extra designs will narrow the enforceable scope of patent claims. Therefore, when a design with multiple embodiments is co-owned, unanimous permission is required for deletion of an embodiment.

  Divisional Application Timeframe

  The relaxation of the rules also extends to the permissible timeframe for filing divisional applications. The current timeframe in which the applicant may file a divisional application is during the examination and re-examination periods. The door closes at the time the TIPO issues a decision of either permission or rejection. In addition to the existing timeframe, the draft will allow a further three months after a decision of approval is made following examination or re-examination.[5]

  Notably, in Taiwan, divisional applications retain the filing date and the priority date. Furthermore, a new examination shall not be required. Instead, the examination for the child application relays from the remainder where it spins off. Lastly, incorporation of the new matters into a divisional application is not permitted and may constitute grounds for invalidity.

  Grace period

  In Taiwan, the grace period clause to allow exemption from loss of novelty and inventiveness stipulates that any intentional and unintentional incidences of disclosures taking place within six months prior to filing shall not be considered prior art. According to the draft, the term of the grace period shall be extended to twelve months.[6]

  On a separate note, Taiwan’s law regarding the grace period does not exclude foreign or Taiwanese patent publications that are known to be published as programmed sometime after filing.

  True ownership

  There are currently two approaches available for an interested party to raise a dispute of patent ownership. Firstly, there is the administrative route, whereby an invalidation proceeding must be initiated with the TIPO. After the TIPO cancels the wrongfully owned patent, the true owner may re-file for the same application within two months of the finalized decision so that the true owner obtains the original filing date. Additionally, since all of the substantive issues were already examined during the prosecution under the name of the false applicant(s), the re-filed application would be granted quickly, generally after a brief formality checks. The second approach for determining the true owner is via the judicial route, or civil litigation, whereby the genuine owner sues the imposter for unjust enrichment or torts. After the court has granted the return of the patent, the genuine owner then submits the winning judgment to the TIPO for the patent right transfer.

  According to the draft, the administrative route shall be abolished leaving only the judicial route as an available course of action.[7] The genuine owner would make a request to the TIPO for a correction of name through a settlement agreement, a court judgment, a reconciliation deed or an arbitrary decision. Furthermore, in order to maintain the stability of the temporary ownership, the party involved in the dispute may request the court to issue a preliminary injunction for maintaining the status quo for up to three months during the TIPO’s procedures such as the examination.[8] Any abandonment of the patent or the application before the dispute is resolved and finalized would be void.