The grace period cannot be accumulated onto the Paris Convention priority period. Secondary considerations are recognizable factors to affirm inventiveness, such as unexpected results, long-felt needs, technical bias, and commercial success. Yet, in a recent case, the court emphasized that secondary considerations recede if the claims are found not inventive. Taiwan’s grace period for novelty and inventiveness is lenient. For any intended or unintended disclosures, either by the applicant or a third party, such disclosure will not become a novelty or inventiveness bar if an application for an invention or utility model patent is filed within twelve months. For design patents, the grace period is six months. To enjoy the grace period benefit, similar to the U.S., the applicant is not required to declare the fact of disclosure at the time of filing but only needs to present evidence to defend against it when the examiner later cites said disclosure. Notably, the grace period cannot be accumulated onto the Paris Convention priority period. For instance, when an invention is first disclosed and then filed in a foreign country, if the invention lapses the grace period, the foreign disclosure bars the invention even though priority is claimed. Notably, a secret prior art reference that is filed first but published later undermines novelty but not inventiveness, which is aligned with the EPO but not the USPTO. For software-related inventions, Taiwan’s Patent Examination Guidelines recommend that specifications include details on tools that achieve the technical function. These may consist of algorithms, pseudocode, and relevant software or hardware architectures, such as programming languages and function libraries. To satisfy the written support requirement, the Guidelines suggest that disclosures should be complete enough for a person skilled in the art to understand the invention and believe it can be practically implemented. 44 LAWYER MONTHLY DECEMBER 2024 Unlike the EPO, Taiwan does not have a post-grant opposition system. The only route to challenge a granted patent is through an invalidation proceeding via TIPO, where any person may initiate a challenge, allowing for anonymous “strawman” actions. If dissatisfied with TIPO’s decision, challengers may file an administrative appeal followed by two levels of litigation. What are the key challenges foreign companies face when applying for patents in Taiwan? PCT and Convention Priority Since Taiwan is not a PCT member, applicants must rely on Paris Convention priority to file in Taiwan. PCT applications cannot enter Taiwan’s
RkJQdWJsaXNoZXIy Mjk3Mzkz