Amendments to Patent Act, the Enforcement Rules of the Patent Act and the Regulations of Patent Fees

The amendments to the Patent Act released on May 1, 2019 entered into force on November 1, 2019. Consequently, amendments to the Enforcement Rules of the Patent Act and the Regulations of Patent Fees were also released on September 27, and became effective on November 1 as well. The key points of the amendments to the two auxiliary rules / regulations are as follows:

1. Enforcement Rules of the Patent Act

• Article 29 will be deleted, since its content is now specified in Paragraphs 6 and 7, Article 34 of the Patent Act. (Article 29 was amended)
• Article 89-1 will stipulate the threshold for evaluating whether certain patent files are worthy of preservation, in conjunction with Paragraph 1, Article 143 of the Patent Act, which specifies that patent files deemed worth preserving by the Specific Patent Agency shall be permanently kept. (Article 89-1 was amended)

2. Regulations of Patent Fees

• Prior to the implementation of the amendments of the Patent Act, according to Article 118 of the Patent Act, in terms of post-grant amendment requests of utility model patent applications, substantive examination would be adopted during invalidation proceedings, while formality examination would be adopted in all other cases. Thus, according to Article 5 of the Regulations of Patent Fees, when it comes to post-grant amendment requests of utility model patent applications, an NT$1,000 and an NT$2,000 fee would respectively apply alongside formality examination and substantive examination. Based on Article 118 of the amended Patent Act, however, in terms of post-grant amendment requests of utility model patent applications, substantive examination shall be adopted under all circumstances. Thus, the amended Article 5 of the Regulations of Patent Fees stipulates that the fee for utility model patent applications is now a unified NT$2,000. (Article 5 was amended)