Part of Patent Act Articles Amended
in May 1997 (for WTO )
Article 21
The following items shall not be granted an invention patent :
1. New varieties of animals and plants, except the cultivating and growing
processes of new plant varieties;
2. Diagnostic, curing or surgical methods for diseases afflicting humans
or animals;
3. Scientific theories or mathematical formulas;
4. Rules or methods of games and sports;
5. Methods or plans which can be implemented only by means of human reasoning
and memory; and
6. An invention which is contrary to public order, good custom or sanitation.
Article 51
In the case of an invention patent covering pharmaceutical(s), agrochemical(s),
or process(es) for manufacturing the same, the patentee may apply for an
extension of his patent term for two (2) to five (5) years, if, pursuant
to other laws or regulations, a prior government permit must be obtained
to practice such patent, of which the process exceeds two (2) years after
the publication of the patent, and only one such extension shall be permitted.
However, the patent term thus extended shall not exceed the length of time
required for obtaining the permit from the central government authority
in charge of the end enterprises. In case the length of time required for
obtaining the permit exceeds five (5) years, the term of extension shall
be limited to five (5) years.
When filing an application pursuant to the preceding Paragraph, an application
must be filed with the Patent Authorities together with supporting evidence
within three (3) months from the date on which the first government permit
is issued. However, no extension application shall be filed within six (6)
months prior to the expiration of the original patent term.
To determine the extension term for an application filed under the preceding
Paragraph, the Patent Authorities shall take into consideration the impact
of the extension on the health of nationals, and coordinate with the central
government authority in charge of the end enterprises concerned to enact
the implementation regulations.
Article 56
Unless otherwise provided for in this Law, the owner of a product patent
shall have a right to exclude others from manufacturing, selling, using,
or importing the patented products for above purposes without his prior
consent.
Unless otherwise provided for in this Law, the owner of a manufacturing
process patent shall have a right to exclude others from using said manufacturing
process and from using, selling, or importing for above purposes, the products
manufactured based on a direct use of said manufacturing process without
his prior consent.
The scope of an invention patent shall be determined based on the claims
set forth in the specification. If necessary, the specification and drawings
may be considered as reference.
Article 57
The effects of an invention patent right shall not extend to any one of
the following circumstances:
1. Where the invention is put into practice for research, educational or
experimental purposes, which involves no profit-seeking acts;
2. Where, prior to filing for patent, the invention has been used in this
country, or where all necessary preparations have been completed for such
purpose; however, this provision shall not apply where knowledge of the
manufacturing method was obtained from the patent applicant within six (6)
months prior to applying for patent and, in addition, the patent applicant
has made a statement reserving his patent right therein;
3. Where the object has already been in existence in this country prior
to applying for patent; 4. Where the transportation means only pass through
the borders of this country or any equipment used therein;
5. Where, in the case of a revocation of the patent right acquired by a
person other than the one entitled thereto as a result of a cancellation
action filed by the person entitled thereto, the licensee granted by the
original patentee has, prior to the revocation of the patent, put the same
patent into practice in good faith or completed all the necessary preparations
therefor; or
6. Where, after the sale of the patented articles manufactured by or for
the patentee, the use or re-sale of said articles. The aforesaid manufacture
and sale is not limited to those committed in this country.
The user referred to in Items 2 and 5 of the preceding Paragraph shall confine
his continued use of the invention to the use in his original enterprise.
The areas in which the sale can be made under Item 6 of the preceding Paragraph
shall be determined by the court based on the fact.
The licensee of the patent right having been revoked as a result of a cancellation
action, as referred to in Item 5 of the first Paragraph, shall pay the patentee
a royalty from the date of receiving the written notification from the patentee,
provided that the licensee continues to practice the patent after the revocation
of patent as mentioned above.
Article 78
In the case of national emergency, a non-profit-seeking use of a patent
for the enhancement of public welfare, or when an applicant has failed to
reach a licensing agreement with the patentee within a considerable period
of time in spite of reasonable commercial terms and conditions already proposed
to the patentee, the Patent Authorities may, upon request by the applicant,
grant a compulsory licensing to the applicant to practice the patent; such
practice shall be mainly to supply the requirements of the domestic market.
However, compulsory licensing of patents covering semiconductor chip technology
shall be allowed only in case of a non-profit-seeking use to enhance the
public benefit.
In the absence of the situations set forth in the preceding Paragraph, the
Patent Authorities may, upon request, grant to an applicant a compulsory
licensing to practice the patent if the patentee has committed unfair competition
as confirmed through a judicial judgement or by the Fair Trade Commission
of the Executive Yuan.
Upon receipt of a written application for patent compulsory licensing, the
Patent Authorities shall send a duplicate copy thereof to the patentee,
requesting that a defense statement be filed within three (3) months. If
no defense statement is filed within the specified time limit, the Patent
Authorities may decide the matter accordingly.
The right of compulsory licensing shall not preclude other persons from
obtaining the right to practice the same patent.
The grantee of a compulsory licensing shall pay to the patentee an appropriate
compensation; in case of any dispute over the amount of such compensation,
the amount shall be decided by the Patent Authorities.
The right of compulsory licensing shall not be subject to assignment, trust,
inheritance, licensing or pledge creation unless it is transacted together
with the business pertaining to the compulsory licensing.
Upon termination of the cause for granting the compulsory licensing, the
Patent Authorities may, upon request, terminate the compulsory licensing
grant.
Article 79
If a person, who under the provisions of the previous Article has been granted
a compulsory licensing, has violated the purpose(s) for granting the compulsory
licensing, the Patent Authorities may, upon request by the patentee or on
its own initiative, revoke such compulsory licensing grant.
Article 80
The owner of a reinvention patent, as provided for in Article 29 of this
Law, shall not practice his patented invention without the consent of the
owner of the original patent.
Where the product manufactured based on a patented manufacturing process
is under a product patent granted to another person, the owner of such process
patent shall not practice his process invention without the consent of the
owner of the product patent.
The owner of the reinvention patent or that of the process patent, as referred
to in the preceding two Paragraphs, may reach with the owner of the original
patent or that of the product patent a cross licensing arrangement so as
to practice the inventions involved.
If the cross licensing arrangement prescribed in the preceding Item cannot
be reached, the owner of the reinvention patent and that of the original
patent, or the owner of the manufacturing method patent and that of the
product patent may apply for compulsory patent licensing in accordance with
Article 78 of this Law. However, compulsory patent licensing requested by
the owner of a reinvention patent or that of a manufacturing method patent
shall be allowed only if the technologies disclosed in the reinvention patent
or the manufacturing method patent must, as compared with the technology
disclosed in the original patent or the product patent, involve important
technical improvements, which is with considerable economic significance.
The compulsory patent licensing right granted to the owner of a reinvention
patent or the owner of a manufacturing process patent shall be allowed for
assignment, trust, inheritance, licensing or pledge creation only when it
is transacted together with the patent right.
Article 82
An invention patentee shall affix to his patented article or the packaging
thereof a marking concerning the patent certificate number, and shall require
his licensee or the grantee of compulsory licensing to do the same. In case
of failure to affix such marking, no claim for damages shall be allowed.
However, if the infringer has known, or demonstrably has means to know,
of the patent, this restriction does not apply.
Article 88
In the event of an infringement on an invention patent, the patentee may
claim damages, demand a cessation of the infringement and, in case of an
anticipated infringement, demand a prevention of any threat of infringement.
An exclusive licensee may also seek remedies set forth in the preceding
Paragraph, provided that the patentee, after receiving notices, elects not
to seek the remedies and that nothing in the licensing agreement precludes
the licensee from doing so.
When an invention patentee or an exclusive licensee seeks the remedies pursuant
to the preceding two Paragraphs, he may request for destruction of the infringing
products or raw materials or items used in infringing the patent, or request
for other necessary disposals.
When an inventor's moral right to indicate his name is infringed, he may
request for an indication of his name, or otherwise request for a restoration
of his reputation.
The right to seek remedies pursuant to this Article shall become extinguished
if not exercised within two (2) years from the time the patentee becomes
aware of the infringement act and the debtors for the compensation obligation,
or within ten (10) years from the time of the infringement act.
Article 91
Where an article manufactured based on a patented manufacturing method has
never been seen anywhere in the world prior to the filing of the method
application, an article manufactured by another person, which is identical
to the one manufactured by the patented method, shall be presumed to be
one having been manufactured by the said manufacturing method.
The presumption made under the preceding Paragraph may be overruled by producing
rebuttal evidence. If a defendant has proved that the method used by him
in manufacturing the products is different from the method claimed in the
patent, it is deemed that the defendant has produced rebuttal evidence.
The legal rights and interests in the manufacturing process and trade secret,
as disclosed by the defendant, shall be fully protected.
Article 105
The provisions of Articles 22 through 25, Articles 27 through 30, Item 1
of Article 31, Articles 32 through 40, Articles 42 through 49, Article 57,
Articles 59 through 65, Articles 67 through 70, Articles 72 through 77,
Paragraphs 1 and 3 of Articles 80, Articles 82 through 90, Articles 92 through
96 of this Law shall apply mutatis mutandis to new utility model patents.
Article 109
The patent right over a new design under patent application shall be entitled
to a provisional patent right after it is approved and published.
Where an examination decision rendered for a published new design patent
application has become final, a new design patent right shall be granted
and a patent certificate shall be issued as of the publication date.
A new design patent right shall expire twelve(12) years from the filing
date of the patent application the duration of an associated new design
patent shall expire simultaneously with its original new design patent.
The provisional patent right provided for under Paragraph 1 shall be deemed
non-existent ab inito, if the patent application is not honored on account
of any procedural defect or if the new design is deemed unpatentable through
an irrevocable decision rendered for an opposition action.
Article 117
Unless otherwise provided for in this Law, for the designated product to
which the patented new design is applied, the owner of a new design patent
shall have a right to exclude others from manufacturing, selling, using
or importing for above purposes products that are identical with or similar
to the article claimed in the new design patent without his prior consent.
The scope of a new design patent shall be determined based on the claim
set forth in the specification and drawings. If necessary, the descriptions
of the creation may be considered as reference.
Article 122
The provision of Articles 24, 25, 27, the fore part of Article 31, Article
32, Articles 34 through 40, Article 42, Article 43, Article 45 through 47,
Article 49, Articles 60 through 65, Articles 68 through 70, Articles 72
through 74, Article 76, Article 77, Articles 82 through 90, and Articles
92 through 96 shall apply mutatis mutandis to new design patents.
The period specified in Paragraph 1 of Article 24 shall be six (6) months
for new design patent applications.
Article 139
The implementation date of the amended Articles 21, 51, 56, 57, 78, 79,
80, 82, 88, 91, 105, 109, 117, 122 & 139 shall be decided by the Executive
Yuan.
NOTE:
In case of any discrepancy between this English translation and the original
Chinese text of these Rules, the Chinese text shall govern.
In case of any discrepancy between this English translation
and the original Chinese
text of the Law,the Chinese text shall govern.
