Grounds for invalidation against invention patent

Any person may request for an invalidation action 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 and the forepart of Paragraph 6 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 ROC nationals; or
3. where there is a violation of Paragraph 1 of Article 12, or where the invention patentee is not the owner of the right to apply for an invention patent.

An invalidation action based on Subparagraph 3 of the preceding paragraph shall only be filed by the interested party.

With respect to the ground(s) upon which an invalidation action is based and filed against an invention patent, the provisions in effect at the time of the said patent being approved shall govern. However, if an invalidation action is filed based on the ground(s) under Paragraph 4 and the forepart of Paragraph 6 of Article 34, Paragraph 2 of Article 43, Paragraphs 2 and 4 of Article 67, or Paragraph 3 of Article 108, the provisions in effect at the time of filing the said action shall govern.

Joint application

Where a right to apply for a patent is jointly owned, the patent application related thereto shall be filed by all the joint owner(s).

Where two or more persons engage in any patent-related procedure other than filing a patent application, each of them may complete such procedure independently, except for making a withdrawal or an abandonment of a patent application, filing an application for division or conversion, or taking other actions for which this Act requires joint execution. However, if a representative is designated by a covenant, such covenant shall prevail.

In the case of an event requiring joint execution as set forth in the preceding two paragraphs, one of the joint owners shall be appointed as the recipient of service of documents. In the absence of such recipient, the Specific Patent Agency shall name the first-listed joint owner as the recipient and shall notify other (s) of such service matters.

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Definition of invention "'Invention' means the creation of technical ideas, utilizing the laws of nature.

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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 printed 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.

An invention that is without the circumstances prescribed in the subparagraphs of the preceding paragraph but can be easily made by a person ordinarily skilled in the art based on prior art shall not be patented .

A disclosure made by or against the applicant’s will shall not be deemed as one of the circumstances that would preclude the grant of an invention patent prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, provided that the concerned patent application is filed within twelve (12) months after the date of the disclosure.

For the publication in a gazette made in this country or a foreign country in accordance with the laws as the consequence of filing a patent application and made by the applicant’s will, the preceding paragraph is not applicable.

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Deemed as lack of novelty

Where an invention claimed in a patent application for invention is identical to an invention or utility model disclosed in the description, claim(s) or drawing(s) of an earlier-filed patent application for invention or utility model which is laid open or published after the filing of the later-filed patent application, an invention patent shall not be granted; however, this shall not apply where the applicant of the later-filed patent application is also the applicant of the earlier-filed patent application for invention or utility model.

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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 for processes for producing microorganisms;
2. diagnostic, therapeutic and surgical methods for the treatment of humans or animals; or
3. inventions contrary to public order or morality.

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Disclosure

The description shall fully 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 may 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.

The manners of disclosure for description, claim(s), abstract, and drawing(s) shall be prescribed in the Enforcement Rules of the Patent Act.

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First-to-file principle

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 specified time period; failure to make a selection within the time period shall result in the rejection of all such patent applications.

While the applicants concerned are in the process of reaching an agreement, the Specific Patent Agency shall require that these applicants report the results of the negotiation within an appropriate time period. If the said report is not provided within the specified time period, it shall be deemed that an agreement has not been reached.

Where a patent application for invention and a patent application for utility model 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 circumstances stipulated in Article 32.

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One creation applied for invention patent and utility model patent

An applicant filing a patent application for invention and a patent application for utility model for the same creation on the same date shall make respective declarations in respect of the said applications. If the patent application for utility model has been granted before an approval decision on the patent application for invention is rendered, the Specific Patent Agency shall notify the applicant to make a selection within a specified time period. The patent application for invention shall not be granted if the applicant fails to make such declarations or selection within the specified time period.

Where the applicant selects the patent application for invention according to the provision set forth in the preceding paragraph, the utility model patent right shall become extinguished on the publication date of the invention patent.

The patent application for invention shall not be granted if the utility model patent right has become extinguished or has been revoked finally and bindingly before a decision is rendered on the patent application for invention.

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Divisional application of invention patent

A patent application that substantially contains two or more inventions may, upon notice by the Specific Patent Agency or upon request by the applicant, be divided into two or more divisional applications.

A request for division shall be filed within any of the following time periods:

1. before a reexamination decision on the original patent application is rendered; or
2. within three (3) months after the date on which an approval decision for the original patent application or reexamination is served.

The filing date of the divisional patent application shall be the same as the filing date of the original application. Where the priority claim has been made, the applicant may claim priority for the divisional patent application.

The divisional patent application shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) of the original patent application as filed.

For the divisional patent application filed in accordance with Subparagraph 1 of Paragraph 2, the examination thereof shall resume the completed examination procedure of the original patent application.

For the divisional patent application filed in accordance with Subparagraph 2 of Paragraph 2, it shall be based on the invention(s) disclosed in the description or the drawing(s), but shall not be the same as that have been approved in the original patent application; the examination thereof that has been conducted before the original patent application is approved shall be resumed.

The description, claim(s), or drawing(s) of the original patent application that have been approved may not be altered and shall be published based on the claim(s) and drawing(s) as originally approved.

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Amendment during examination; final notice

Unless otherwise stipulated in this Act, when examining a patent application for invention, 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 period.

Except for correction of translation errors, any amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.

Where the Specific Patent Agency has issued a notice pursuant to Paragraph 2 of Article 46, a patent applicant shall only make amendment(s) within the specified time period in the notice.

The Specific Patent Agency may, as it deems necessary, issue a final notice after having issued a notice prescribed in the preceding paragraph. The applicant who is to amend claim(s) after a final notice has been issued shall only make the following amendments within the time period specified therein:

1. to delete claim(s);
2. to narrow down the scope of claim(s);
3. to correct errors; or
4. to clarify ambiguous statement(s).

In case of a violation of the provisions in the preceding two paragraphs, the Specific Patent Agency shall state the reasons in a written decision and render such decision accordingly.

The Specific Patent Agency may issue a final notice accordingly 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; or
3. where the content of the notice issued for a divisional application is same as that of the notice issued for other divisional application(s).

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Foreign language documents

Where a patent applicant submits a description, claim(s), and drawing(s) prepared in a foreign language pursuant to Paragraph 3 of Article 25, such foreign language documents shall not be amended.

The Chinese translation submitted pursuant to Paragraph 3 of Article 25 shall not extend beyond the scope of content disclosed in the original foreign language documents as filed.

Any correction of translation errors in the Chinese version as stated in the preceding paragraph shall not extend beyond the scope of content disclosed in the original foreign language documents as filed.

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