Taiwan IPO Announces New Patent Examination Guidelines

Date: 27 June 2022

The Taiwan Intellectual Property Office (TIPO) has recently announced an amendment to Chapter 3, 6, 7, 8, 9, 14, Part II of the Patent Examination Guidelines. The new Guidelines will go into effect on 1 July, 2022, covering the examination on one creation applied for invention patent and utility model patent, undisclosed disclaimers, correction of errors, post-grant amendments, and certificates of deposit of biological material. We set out below the major changes and offer our suggestions.

1.Examination on one creation applied for invention patent and utility model patent

On Page 2-3-41, Chapter 3 “Patentability”, Part II of the Guidelines, two principles of examination are added. When one creation is applied for an invention patent and a utility model patent, during the examination on the invention, if the utility model patent is invalidated and revoked, but the revocation has not become final and binding, in principle, the examiner shall wait for the final and binding decision to be rendered, and resume the examination on the invention. However, if there are changes in circumstances or different condition in certain cases, the examiner may examine the invention with reference to the evidence provided in the invalidation case of the utility model patent.

Furthermore, after the invention patent application is approved but before its patent right being granted, if the utility model patent is invalidated and revoked, but the revocation has not become final and binding, the examiner shall withdraw the approval decision and re-examine the invention based on the aforementioned principles.

2.Undisclosed disclaimer

The revised Guidelines announced on 14 July, 2021 have limited disclaimers to overcoming references that prove a lack of novelty, lack of fictitious novelty, or non-compliance with the first-to-file principle, or inventions that involve “human beings”. The new Guidelines further stipulate in Chapter 6 “amendments” that where an applicant amends the claims with undisclosed disclaimers to disclaim technical content that overlaps with prior art on his own initiative before an Office Action is issued, the applicant shall provide the prior art and the reasons. If such documents are not provided, the amendment would be deemed as introducing new matter.

Similar regulations are added in Chapter 9 “post-grant amendments” in the new Guidelines. Undisclosed disclaimers in post-grant amendments are limited to overcoming references that prove a lack of novelty, lack of fictitious novelty, or non-compliance with the first-to-file principle, or inventions that involve “human beings”. If patentees request for disclaiming undisclosed technical content that overlaps with prior art to amend the claims in post-grant amendments, the prior art and the reasons shall be provided.

3.Correction of errors

On Page 2-7-6, Chapter 7 “Notification of Office Action and Allowance”, Part II of the Guidelines, two conditions belonging to “errors” are added:

i. Where the number of the drawings, reference signs or the necessary descriptive words in the drawing are obviously inconsistent with the description in specification, or the drawings are wrongly made and therefore obviously inconsistent with each other.

ii. Where there is a mistake in the technical statement. For example, when an applicant requests to amend a chemical or mathematical formula in the specification or the claim, if the formula is determined an obvious oversight or mistake by a person skilled in the art based on the common general knowledge at the time of filing, and if there is no other possible correction except for the way the applicant requests for, the amendment may be deemed as a correction of errors.

4.Certificates of deposit of biological material

In 4.2.4, Chapter 14 “Inventions related to biological material”, Part II of the Guidelines, it is stipulated that when an applicant has deposited the biological material in a depository designated by a foreign country in its territory with which Taiwan recognizes the effects of deposits based on reciprocity, if the certificate is issued by a depository unrecognized by a country party to the Budapest Treaty, whether the certificate can prove the viability of the deposited material shall be examined. If it cannot be proved, a notification shall be issued and notify the applicant to submit the certificate within 4 months after the filing date (or within 16 months after the earliest priority date). If the certificate is not submitted within the specified time period, the deposit shall be deemed not to have been made.

Moreover, for those who fail to submit the certificate, an Office Action shall be issued in the substantive examination, stating the aforementioned circumstances and a lack of enablement due to the above reasons, and a chance for the applicant to respond shall be given, before the examiner rejects the patent application.

Wisdom Suggested Strategies

In conclusion, several chapters are revised in the amendments to the Guidelines. Especially in chapters related to disclaimers, one creation applied for invention patent and utility model patent, and certificates of deposit of biological material, stricter regulations are added. Applicants should especially pay attention to the above amendments. We will keep track of TIPO’s newest announcement and offer the latest development and our insight and suggestions.

 

 

 

 

Login

Login Success