Taiwan's Patent Act has been further amended on May 31, 2013.

Taiwan’s Patent Act has been further amended on May 31, 2013. The highlights of the said amendments are as follows:

1. Amendments regarding filings of both an invention patent and a utility model patent for an identical invention by the same applicant:

(1) An applicant who intends to file both an invention patent application and utility model patent application for an identical invention shall comply with the following requirements: (i) the same applicant, (ii) the identical invention, (iii) filing applications of invention patent and utility model on the same day, (iv) making respective declarations of the duplicate filings in both applications. The respective declaration is additionally required in the most recent amendments. The Intellectual Property Office (“IPO”) will not grant the invention patent in case of any violation of the respective declaration requirement.

(2) After the effectiveness of the amendments, in the case where an applicant who has been granted a utility model patent selects to maintain his invention patent application upon the notice of IPO, the utility model right will become extinguished on the publication date of the invention patent instead of being deemed as non-existent ab initio.

2. Amendments regarding the calculated methods of the damages resulting from patent infringement:

(1) According to the amended Article 97.1.3, the damages of patent infringement may be calculated on the basis of the reasonable royalty that may be collected form exploiting the invention patent being licensed. The Article 97.1.3 prior to the amendments provided that the damages of patent infringement may be the equivalent amount of royalty which may be collected from exploiting the patent under licensing.

(2) In view of the difficulty in calculation of the damages of patent infringement, the new Patent Act reintroduce punitive damages which had been deleted on Nov 29, 2011. Under the latest Patent Act, in the event of intentional infringement of patent right, the court may, upon request and on the basis of the severity of the infringement, award the damages greater than the loss suffered but not exceeding three times of the proven loss.