Enforcement rules of Taiwan’s Patent Act to be amended

The Intellectual Property Office of the Ministry of Economic Affairs recently announced that it will amend Articles 67 and 80 of the Enforcement Rules of the Patent Act.

Simplified procedures for recordation of pledges

According to the current Article 67, in requesting recordation of pledge establishment of patent rights, a patent certificate shall be submitted for the annotation to protect the pledgee’s rights. However, annotating the pledge recordation to the certificate is not required in various countries. The pledge recordation can be verified by the letter of approval of pledge recordation or the pledge recordation from the website of the Intellectual Property Office as well. Therefore, the requirement of submitting a patent certificate in requesting the recordation of pledge establishment of patent rights will be removed in the amendment.

In addition, according to the current regulations, when requesting deletion of pledge establishment recordation, the patentee or the pledgee shall submit a letter consenting to the deletion of pledge establishment recordation issued by the pledgee. After the amendment, the requirement will be relaxed. The patentee or the pledgee is only required to submit a document that can prove the pledgee's consent to delete the pledge establishment recordation.

Grounds for relaxing the application for re-issuance or renewal of a patent certificate

Under the current Article 80, the patentee can only apply for a renewal of the patent certificate where it is destroyed, lost or damaged to the extent that it is no longer usable. However, the patentee may also need to apply for a renewal of the patent certificate when it is obsolete or when there is a change of the recordation items of the patent, for example, when the patent term is extended. Therefore, with reference to the Trademark Act, the amendment will also introduce a new provision that the patent certificate can be renewed when it is obsolete or when the recordation items of the patent are changed.

The amendment will also introduce a new provision that when the patent certificate is reissued or renewed, the Intellectual Property Office shall annul the original patent certificate.

The amendment is made in consideration of the rights and interests of the patentee and the pledgee. Once the amendment is approved, the system will become more friendly for the patentee or pledgee.