Amendments to the Taiwanese Patent Examination Guidelines
Six chapters of the Patent Examination Guidelines saw several revisions by the Taiwan IP Office in June (“Revisions”). These finalized revisions went into effect on July 1, 2022, with the purpose of improving examination quality, harmonizing the Office’s internal viewpoints on various issues, and more effectively addressing common questions that have come up during the development of examination methods. The following is a summary of the main points.
New procedures for examining a pending invention application in a situation involving parallel filing
A practical method for obtaining early protection for an invention is to submit both an invention patent application and a utility model application on the same day, by the same applicant(s), and for the same subject matter(s). A utility model will be given very rapidly only a few months—because it is not examined. A granted utility model offers legal protection for an object’s shape, structure, or combination of these. This happens while a patent application for the same novel idea is being examined; the application takes about a year to be approved. The applicant chooses between the granted utility model and the authorized innovation application after the invention patent application has been approved. If the former is chosen, the invention patent right will automatically take effect and the utility model right will expire as of the invention patent’s publication date.
Regarding the parallel filing procedure, there have been some concerns about how the IP Office might need to handle a pending inventive patent application if, in the meanwhile, the issued utility model that covers the same topics is invalidated. According to the new revisions, a patent application for an invention must comply with the approved utility model’s validity if they both cover the same subject matter. In general, the investigation of an invention patent application should be put on hold until the utility model’s validity has been decided upon following any pending appeals.
There are, however, certain exceptions. For instance, the applicant may change the claims in the invention application so that they are substantially distinct from the claims in the utility model, or the examiners may explicitly specify rejections in the invention application. The examination of the invention application may go on without interruption if any of the exclusions apply. However, the data offered in support of the utility model’s validity may be cited throughout the examination.
Additionally, the examiner must withdraw the permission of the invention application if a utility model is found to be invalid but the decision has not yet been made at the time the invention application has been permitted but not yet granted. The examiner must halt the examination of the invention application in order to ensure consistency amongst them in terms of validity; it may only begin once the utility model’s validity has been established.
The certification of biological material deposits requires evidence of viability and deposit
Some life science-related patent applications require the deposit of microbes or other biological materials as part of the disclosure in order to satisfy the enablement requirement. If a certificate for the foreign deposit is submitted to the Taiwan IP Office within four months of the Taiwan filing date or sixteen months from the priority date, the same patent application benefits from a waiver of the local deposit-taking requirements in Taiwan for a deposit made previously in a foreign depository that is reciprocally recognized by Taiwan.
Particularly, as made explicit in the Revisions, such a certificate should contain information on the viability of the material as well as the particulars of the deposit made. These two types of data have often been present on certificates issued by depositories certified by Budapest Treaty signatories. A foreign deposit, however, does not exempt it from the requirements of the local deposit if the certificate issued by another depository does not demonstrate the viability and specifics of the deposit. In this situation, the applicant must make the local deposit within four months of the filing date or sixteen months of the priority date, whichever comes first.
In addition, the Revisions clearly demand for the examiner to explain why a failure to produce proof of viability would result in a rejection of enablement in an Office action in order to give the applicant a chance to dispute the rejection.
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