TIPO recommends amendments to the Patent Act

TIPO recommends amendments to the Patent Act

Earlier this year, Taiwan Intellectual Property Office (TIPO) recommended the amendment of the Patent Act, for making it more similar to that of its counterparts in many other jurisdictions such as Germany, Japan, and the United States, etc.

Out of the recommended amendment, an important change was the constitution of a new reviewing board titled "Patent and Trademark Reconsideration and Disputes Review Board". This Board will hear and investigate various challenges that pertain to the validity of patents. The Board will have jurisdiction over various patent and trademark-related cases. For all these recommended amendments, TIPO is seeking public comments on the proposals.

For any aggrieved party, if the decision has not been made in the favor, then the party can challenge the outcome of the Board before Taiwan's Intellectual Property Court. The Court hears the exclusive IP-matters and will also hear any such appeal from the Board as well. Previously, the party that challenged the decision needs to file with the administrative appeal committee, which through this amendment will not be a necessary part to file, thereby expediting the entire process.

When the challenging party appeal to the IP court concerning the decision of the TIPO, it becomes more of a dispute between the TIPO and the challenging party rather than the private dispute. The changes impact this structure and any appeal to the TIPO will be considered as a private dispute. Therefore if the challenging party is the one whose contention was dismissed and the patentee won the case, in appeal the defendant will be the patentee rather than the TIPO or the review board, as the case may be.

The amendment hopes to have an expedited review of any such case since the review board will hear the case which will be in accordance with the plan and the party need not serve any such administrative notice. Also, the proposed amendment states that the parties shall be represented by the patent attorneys or patent agents which can further bring more efficiency to the system.