China: On Differences Between The Patent Law In Mainland China And Taiwan

Last Updated: 28 September 2018
Article by AFD China Intellectual Property
Most Read Contributor in China, November 2018

Taiwan and Mainland China have always been closely connected with each other. And along with the increasingly close communication in terms of economy and culture, more and more enterprises pay their attention to the Taiwan market. And as a result, the number of patent applications filed by citizens of mainland China is increased day by day.

The Patent Law in Taiwan has been amended for thirteen times, and the newly amended version has been taken effect as of May 1, 2017. Here we would like to share several obvious differences between the latest Patent Law in Taiwan and Mainland China with you.

I. Correction to patent documents

Articles 67, 120, and 139 of the Taiwan Patent Law stipulate respectively the right of patentees to correct the patent documents of an invention, utility model or industrial design patent. In other words, after the patent certificate is obtained, patentees still have the opportunity to make necessary adjustment to their patent documents which issued officially. Of course, there are restrictions on such post-grant amendments so as to avoid the patentee to widen the protection scope or seek protection for what are not disclosed in the initial application documents. The post-grant amendments would only be allowed if it were to: deleting claims, narrowing down the protection scope, correcting errors or mistranslations, and explaining unclear contents recorded thereof. Once the correction is approved, the updated patent documents will be announced again to the public, and the patent term is still reckoned from the filing date.

According to the relevant provisions of the Chinese Patent Law in the Mainland, once a patent is granted, the applicant will not be allowed to make modification to their patent documents which means the requirements for the applicants to review the application documents are stricter in mainland of China during the examination process. In practice, generally no modification would be allowed after the grant announcement made to the public. If there are indeed problems and/or errors in the patent documents, patentees may only be able to try to modify them by activate the invalidation procedures.

Compared with the Chinese Patent Law, the Taiwan Patent Law is more considerate. It gives opportunities to the patentees to allow them to solve the problems which they identified after the patent issued. It not only makes the authorized version of the patent documents become more completed and accurate, but also reduces the level of the risk on subsequent infringement and invalid legal issues. At the same time, from the jurisprudence perspective, patent rights are a part of the civil rights and therefore the right holders have the right to possess, use, profit and dispose his rights. Such a disposal of rights should include not only assigning, gifting, abandoning but also modifying, adjusting, deleting of the "possession" i.e. the patent(s). Considering the social justice, the law restricts the exercise of this right and imposes necessary restrictions to maintain the fairness of patent prosecution and the credibility of patent announcements.

In order to better protect the rights and interests, same time to avoid possible legal dispute within Taiwan, those who obtained a patent in Taiwan and have the demands of modifying the patent documents may consider making the amendment within the allowable scope of the Taiwan Patent Law. Especially when encountering invalidation procedures initiated by others, the patentees can make a request to make further amendments. The amendment request will be examined together with the invalidation request and might bring a more desired result.

II. Conversion of patent type

According to the Chinese patent law, applicants are required to select the type for his/her patent application at the beginning as when filing the application. They need to ensure in which type he/she would like to seek protection for his/her invention-creations – invention, utility model or design. Once it is selected, it cannot be changed. Such requirements are aimed to improve the working efficiency of the examination since the examination will be assigned to the suitable department according to the type of the patent at the very beginning.

In parallel, according to Article 108, 131 and 132 of the Taiwan Patent Law -, applicants are allowed to change the type of a patent application during the prosecution. To be specific, the applicants are allowed to: 1) convert an invention patent application to be either a utility model or a design patent application; 2) convert a utility model patent application to be either an invention or a design patent application; convert a design patent application to be either a utility model or a derivative design patent application (the latter one is a special patent type in Taiwan);

Regarding the timing of the conversion, the applicants shall ensure that the request is submitted before the notification of granting a patent is delivered. In other words, if patent right is already obtained, no conversion will be allowed. Where the decision of the patent office is to reject the application, the request of conversion shall be made within 2 months from the date on which the decision of rejection is delivered for invention and design applications; or 30 days for utility model applications.

Regarding the protection scope, the applications after conversion shall not go beyond the scope disclosed in the initial description, claims or figures, i.e. it is not allowed to enlarge the scope of a patent application by changing the type of the patent application. In the meantime, the subject matter of the claims shall be in conformity with the specific requirement of the patent type after the conversion. For example, it is not allowed to protect method in a utility model patent application.

When applying for Taiwan patents, the applicant shall take in account of his/her business strategy, the overall arrangement of patent protection, and the prosecution process and may use patent conversion to obtain the desirable result.

III. Conflicting application and novelty determination

Conflicting patent applications refer to patent applications that conflict with earlier-filed but not yet published patent applications by the same or a different applicant.

According to relevant provisions of the Chinese Patent Law, conflicting application destroys novelty, regardless of who is the applicant of the conflicting application. Therefore, if an applicant wants to file patent applications in the Mainland, he/she should try to use priority claiming to impair or avoid the risk where his/her latter application would lose novelty due to his/her early conflict application(s).

The Taiwan Patent Law explicitly indicates different opinions on conflicting applications. To be specific, it is stipulated that an early patent application will not destroy or undermine the novelty of a latter patent application if these two patent applications are owned by the same applicant. In other word, if a patent application is filed to seek protection for further development on the basis of an early innovation for which a patent application has been filed previously, even if the latter patent application does not claim priority to the previously filed patent application, such an early patent application will not destroy the novelty of the latter patent application.

IV. Time limitations

There are many differences in terms of time limitations during patent prosecution process between the Patent Law in Mainland China and the Patent Law in Taiwan. For instance, in mainland China, the certified copy of the priority is required to be filed within three months from the date on which the application is filed; while in Taiwan, it shall be filed within 16 months from the earliest priority date. Regarding the request for substantive examination, the applicant is the only person allowed to submit the request in the Mainland; while in Taiwan, anyone can submit the request, the patent examination authority will inform the applicant if the request is not filed by him/her.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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