25 August 2021
1. Summary of the Draft Amendment to the Patent Law
(1) The second edition of the draft expired on July 6, 110 during the notice period, which is the most extensive amendment to some articles in recent years
The Ministry of Economy of the People’s Republic of my country announced the first edition of the draft amendments to certain provisions of the Patent Law (hereinafter referred to as the "Draft") on December 30, 109. The notice period for soliciting written opinions expired at the end of February 110, and recently it was on June 22, 110. The second edition of the Japanese notice draft expired on July 6, 110. Compared with the current patent law, the second edition of the draft has a total of 79 amendments, which is the largest partial amendment after the full amendment in 102 years.
The first version of the draft has two major changes. The first part is the administrative review procedures for reexamination and dispute cases conducted in the Intellectual Property Bureau of the Ministry of Economic Affairs. The second part is the review and dispute cases that are heard in the intellectual property and commercial courts. Civil proceedings. Regarding the above administrative review procedures, our firm has previously written an introduction ("Introduction to the Draft Amendment of the Patent Law-Review and Dispute Review Part (Taiwan)", Li Ci Special, May 17, 2021).
Compared with the first version of the draft, the second version of the draft made two major amendments to the above-mentioned administrative review procedures in response to the public suggestions at the first notice: (1) Relaxation of the applicant's service of the original application for review and approval Within the next two months, the division may be applied for during the reexamination process; and (2) If there is a dispute over the ownership of the patent application and the patent right and seeks relief through civil means, the party concerned may apply to the Intellectual Property Bureau to suspend the procedure involving the transfer of rights.
(2) The main changes in the second edition of the draft in the civil procedure of review cases and dispute cases
This article uses the second version of the draft as a blueprint to continue to introduce the above-mentioned civil litigation procedures. Compared with the first version of the draft, the second version of the draft also made two major amendments to the above-mentioned civil litigation procedures in response to external suggestions: (1) The issuer or its participants may provide new reasons or evidence in patent dispute litigation. The reasons for the exception; and (2) The adjudication of the patent dispute litigation newly created by the Patent Law is specified as follows.
In the second version of the draft, patent review litigation and dispute litigation are exclusively under the jurisdiction of the intellectual property and commercial courts. They are at the high court level. They can appeal or protest to the Supreme Court. Qualification of patent attorney or patent attorney.
(3) Provisions of the second edition of the draft regarding litigation in patent reexamination
The cases in which patent reexamination litigation can be filed are the following cases that have been reviewed and decided by the Intellectual Property Bureau and the Dispute Review Committee (hereinafter referred to as the "Trial Committee"):
(a) Dissatisfaction with the refusal and review case for not approving the patent,
(b) Application for extension of the patent right period,
(c) Corrections, and
(d) Dissatisfaction with other reexamination cases related to patent applications and other procedural sanctions.
Important provisions related to the trial of patent reexamination litigation include:
1. Acceptance of litigation: When "dissatisfied with the deliberation decision", the applicant and participant of the above-mentioned case (such as the exclusive authorized person of the correction case) can be the plaintiff, and the "Intellectual Property Bureau" is the defendant to bring this lawsuit.
2. Proceedings of litigation: As the deliberation and decision involve the legality of the above cases and are related to public interest, the court shall investigate the necessary factual relationships and evidence according to its authority, and is not subject to the parties' claims, self-confession, abandonment, acknowledgment or settlement, etc.
3. Termination of the lawsuit: If the plaintiff’s lawsuit is justified and the factual relationship and evidence of the case are clear, the court will decide to "revoke or modify the deliberation decision" or "order the Intellectual Property Bureau to make the deliberation decision of the plaintiff's statement."
(4) Provisions of the second edition ofthe draft regarding litigation in patent disputes
Cases that can be filed for patent disputes are the following cases that have been deliberated and decided by the deliberations:
(e) Reporting of patent rights,
(f) Extension of the patent right period to report cases.
In addition, (g) the above-mentioned application for reporting or extending the reporting of cases, which does not meet the procedural requirements, may also initiate a patent dispute litigation after the review committee has made a decision not to accept the case.
Important provisions related to the trial of patent dispute litigation include:
1. Acceptance of litigation: When "disagreement with the patent right of the deliberation decision" or "dissatisfied with the decision of non-acceptance", the parties and participants can be the plaintiff, and the "other party" is the defendant to bring this lawsuit.
2. Proceedings of litigation: If the informant or participant raises the above-mentioned report (e) with inconsistent essential elements (if not progressive) in the administrative review procedures of the review meeting, one of the following two exceptions must be explained: (1) Failure to submit due to violation of laws and ordinances of the review committee (if the review plan is not complied with), (2) The facts are obvious in the court or are known by their duties, and the court should investigate the evidence ex officio (e.g. Only those with ordinary knowledge in the field" can provide new reasons and new evidence that were not claimed in the review process. In addition, when hearing the aforementioned cases (e) and extension cases (f), the court is limited to "determination of the scope of patent rights" (for example, item 1 of the request for reporting). , Acknowledgment or settlement, etc. (such as additional prosecution request item 2).
3. Termination of the litigation: If the plaintiff’s lawsuit is justified, in the above-mentioned case (e) and extended case (f), the court shall revoke the deliberation decision and "determine the scope of the patent right" within the scope of the declaration of the plaintiff; For applications that do not meet the procedural requirements (g), the court shall revoke the non-acceptance decision and "return to the review committee for deliberation." In addition, for the purpose of information management, the court shall notify the Intellectual Property Bureau when the lawsuit is accepted and terminated; if the court decides to change the scope of patent rights, the Intellectual Property Bureau will directly announce it.
2. Matters needing attention in response to the recommendations of the second edition of the draft
The second edition of the draft is still in the early stage of revision. The Executive Yuan has not yet passed a letter to the Legislative Yuan for deliberation. Its follow-up development still needs further observation. I would like to put forward the following suggestions for the second edition of the draft:
According to the current regulations, if the Intellectual Property Bureau disagrees with the decision made by the Intellectual Property Bureau after reviewing the above cases (a) to (g), the applicant must first file an administrative appeal and then file an administrative remedy procedure for the administrative litigation. According to the content of the second edition of the draft, the above-mentioned cases (a) to (g) directly initiate civil proceedings, simplify the level of administrative appeals, and enable applicants to obtain early court judgments while reducing the cost of time and money.
On the other hand, the review meeting is essentially equivalent to the first civil trial of the local court. The applicant must determine the subject matter (such as request item 1) and provide reasons and evidence as much as possible (such as evidence 1 can prove the request). Item 1 is not progressive). In the civil procedure of the court, it will not be possible to add the subject matter (such as additional claim 2) and in principle, it is forbidden to propose new reasons and new evidence (such as the combination of claim evidence 1 and evidence 2). 1 and claim 2 are not progressive). Applicants must have more complete preparations when hearing the above cases (e) and (f) in the review committee.
In addition, the court is in the form of civil proceedings, but in essence it is examining whether the deliberation or rejection decision is legal, which is in the spirit of administrative litigation. Therefore, the parties cannot arbitrarily admit, abandon, agree to or settle as in ordinary civil cases. .
Furthermore, in practice, the main case is that after the patentee filed a civil infringement lawsuit against the infringer in the court, in addition to the infringer defending the invalidity of the patent in the civil infringement lawsuit, the infringer also often reported invalid patent rights to the Intellectual Property Office (ie The above case (e)). According to the content of the second edition of the draft, civil tort litigation and the above-mentioned case (e) may both be appealed to the second civil trial in the intellectual property and commercial courts, and the two cases will be heard by the same judge. Therefore, before filing a civil infringement lawsuit, in addition to collecting evidence of infringement, the patentee should also conduct prior art searches to confirm the strength of the validity of the patent right and avoid the risk of unfounded infringement and invalidity of the patent right.
For further information, please contact:
Lawyer Shi Zhikuan, Lee Tsai & Partners
lawtec@leetsai.com
[1] The author is an attorney at Liz International Technology Law Firm, but the content of this article is a personal opinion and does not represent the firm’s position.
[2] The author is a partner lawyer of Li & Ci International Technology Law Firm, but the content of this article is a personal opinion and does not represent the firm's position.
