TIPO amends Patent Examination Guidelines in Taiwan

The Taiwan Intellectual Property Organization (TIPO) has published amendments to the following chapters in Part II (Substantive Examination for Invention Patents) of the Patent Examination Guidelines in order to address the requirements of examination practice and raise examination quality.

These amendments went into effect on July 1, 2022. The highlights of the amendments are summarized in this article.

Patent Examination Guidelines Amendments

Article 32(3) of the Patent Law stipulates that when an applicant files for an invention patent and a utility model patent for the same invention simultaneously the same time:

The patent application for [an] invention shall not be granted if the utility model patent right has become extinguished or has been revoked finally and bindingly before a decision is rendered on the patent application for the invention.

However, the Patent Examination Guidelines do not define how the examination of the invention patent application should proceed if an invalidation action against the previously granted utility model patent is regarded well-founded (although not yet definitively and bindingly revoked):

• during the examination of invention patent application; or
• between the allowance and the publication date of the invention patent.

The modification adds points (5) and (6) to section 5.7.2 of Chapter 3, detailing the examination principles applicable to innovation patent applications under certain conditions.

According to the newly added point (5):

In the examination of an invention patent application, if an invalidation against its previously granted utility model patent of the same creation has been considered well-grounded but not yet revoked finally and bindingly, the application result for [the] invention patent should be consistent with the determination result of the utility model patent with regard to the same creation. In principle, the examination of the invention patent application shall not proceed until the administrative remedial proceeding in relation thereto becomes final and binding. However, depending on the circumstances of the case (e.g., the evidence is clear enough to conclude that the invention lacks patentability) or changes in circumstances (e.g., the applicant amended the claim(s), and the creation is no longer the same), the patent examiner may proceed to examine the invention patent application after the invalidation [evidence] against the utility model patent is deliberated.

According to the newly added point (6):

If an invalidation against its previously granted utility model patent of the same creation has been considered well-grounded but not yet revoked finally and bindingly during the time between the allowance and the publication date of the invention patent, the examination results for the utility model patent and [the] invention patent of the same creation should be consistent. Under this circumstance, the patent examiner shall revoke the approval decision for the original invention patent application and resume the examination, whose principle adopted is identical to that referred to in the preceding paragraph.

A “disclaimer,” or a negative limitation that excludes overlaps with the prior art, may be added to a claim during the examination of an invention patent application in order to address issues with novelty, novelty based on legal fiction, or non-compliance with the first-to-file principle arising from the cited documents.

In reality, though, if an applicant learns about a specific previous case before receiving an office action during the filing of a domestic patent application, they may plan to voluntarily amend the claim(s) to remove any overlap with the prior art. Section 4.2.2 of Chapter 6 of the Amendment sets forth the guidelines for investigation in such situations to resolve this issue.

The prior art to be disclaimed and the justifications for the disclaimer must be provided when an applicant changes the claim(s) with disclaimers that do not correspond with prior art before the TIPO issues an office action and the content disclaimed has not been disclosed in the specification, the claim(s), or the drawings. If not, it will be seen as the emergence of new issues.

In addition to cases where “some of the claim(s) referred or depended are deleted and the remaining claims are itemized,” a description has been added to section 3.1.2 of chapter 7 of the amendment, stating that the newly added claims do not constitute the “narrowing down the scope of the claim(s)” as referred to in the restrictions on amendment after a final notice has been issued.

According to Patent Act’s Article 27.1:

When filing a patent application for an invention involving a biological material or invention utilizing a biological material, the applicant shall, no later than the filing date, make a deposit of the biological material with a domestic depository designated by the Specific Patent Agency. No deposit is required if the biological material involved can be easily obtained by persons having ordinary skills in the art.

A certificate of deposit must be sent to the authorized patent agency by the applicant within four months of the patent application’s filing date, according to paragraph 2 of the same article.

Section 4.2.4 of Chapter 14 is amended to include a new point (3) pertaining to certificates of deposit. A certificate of deposit produced by the depository that attests to the deposit and survival of the biological material is sought from the applicant. The prerequisites are satisfied by a certificate of deposit issued by a depository acknowledged by a signatory state to the Budapest Treaty. The applicant must consider whether the certificate of deposit given by another depository can demonstrate that the biological material being placed has survived. Otherwise, the TIPO will inform the applicant that they must provide an additional survival certificate within four months of the application date (16 months after the earliest priority date if priority is claimed).

The deposit will be regarded to have been abandoned if this document is not presented within the necessary time frame. When this happens, the TIPO shall explain the reason(s) why it was difficult to be realized during the substantive examination and provide the applicant a chance to respond. The TIPO may then choose to refuse a patent application if it doesn’t comply with paragraph 26 of the Patent Act.

Other amendments include discretionary wording changes, the correction of inconsistencies, and the correction of misrepresentations of the contents of each chapter in order to conform to the provisions of the related laws and regulations.

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