Home >> News & Publications >> Lee and Li Updates >> Newsletter >> Draft Amendment to the Patent Act: Relaxation of Timing Restrictions on Divisional Applications; No Claim of Divisional Application Shall Be Identical with Any of Allowed Claims of Its Parent


Draft Amendment to the Patent Act: Relaxation of Timing Restrictions on Divisional Applications; No Claim of Divisional Application Shall Be Identical with Any of Allowed Claims of Its Parent



The Executive Yuan approved the draft amendment to the Patent Act on December 27, 2018, and the draft amendment will soon be submitted to the Legislature Yuan for review. The amendment regarding divisional applications is as follows:
 
I.          Timing for Filing Divisional Applications for Invention and Utility Model Patent Applications
 
The currently effective Patent Act allows a patent applicant to file a divisional application(s) during the examination period for his/her invention or utility model patent application. If a Notice of Allowance is issued, only an invention patent application will be allowed to have a divisional application(s) separated therefrom within thirty days of receiving the Notice of Allowance in the first examination phase; if an invention patent application was rejected in the first examination phase and entered the reexamination phase, no divisional application is allowed after the patent office issues a decision (either allowing or rejecting the application) for the reexamination. In addition, filing a divisional application for a utility model application after receiving a Notice of Allowance is not allowed.
 
The draft amendment relaxes the timing restrictions on divisional applications.  For invention patent applications, filing divisional applications within three months of receiving a Notice of Allowance in either the first examination phase or reexamination phase will be allowed. For utility model patent applications, divisional application filing shall be allowed within three months of receiving the Notice of Allowance. This amendment still does not allow divisional applications to be filed after a rejection decision is issued (but some foreign countries allow such). Nevertheless, the relaxation of the timing restrictions on divisional application for not only invention applications but also utility model patent applications will certainly to some extent provide the applicants with more time to consider how they could thoroughly utilize their patent specifications and drawings, which have already been formulated and submitted to the governmental patent authority, to obtain more protections through filing patent applications.
 
The table below shows the timing of filing divisional applications for invention and utility model patent applications in accordance with the current Patent Act and the draft amendment:
 

Divisional Application
Examination Phases
Invention Patent Application
Current Patent Act
2019 Draft Amendment
Under Examination
V
V
Within Thirty Days of Receiving Notice of Allowance in First Examination Phase
V
V
Rejected in First Examination Phase and No Reexamination Requested
X
X
Under Reexamination
V
V
Within Thirty Days of Receiving Notice of Allowance in Reexamination Phase
X
V
Rejected in Reexamination Phase
X
X

 
 

Divisional Application
Examination Phases
Utility Model Patent Application
Current Patent Act
2019 Draft Amendment
Under Examination
V
V
Within Thirty Days of Receiving Notice of Allowance
X
V
Rejected upon Examination
X
X

 
II.       No Claim of Divisional Application Shall Be Identical with Any of Allowed Claims of Its Parent
 
An additional highlight of this amendment is that invention(s) claimed in a divisional application shall not be identical to any claimed invention of its parent application for which the patent office has issued a Notice of Allowance.
 
According to Article 31 of the currently effective Patent Act regarding prohibition of double patenting, one invention can only be granted once and does not need (and also shall not) be granted for more than one patent. This draft amendment further clarifies that no claim of a divisional application shall be identical with any of the allowed claims of its parent application. If the draft amendment is passed, in practice, once an applicant receives a Notice of Allowanceupon examination of his/her patent application, even if he/she does not pay the certificate fee and/or other fees for maintenance (in which case the patent will not be published or granted as a patent right), the applicant will not be allowed to obtain patent right through filing a divisional application with the same claim(s) as any one of the claims of the allowed parent application. Even if the applicant considers some claims of the parent application not perfect and would like to abandon the parent application by not paying the certificate fee and issuance fee, etc., and file a divisional application to pursue patent right with substantially the same or similar claimed invention(s), it will not be permissible for the invention(s) claimed in the divisional application to be identical to any of the invention(s) claimed in its parent application. Therefore, if some of the inventions claimed in the parent application are still of value to the applicant, it is advisable that the applicant maintain the parent application by paying the certificate and issuance fees to obtain the patent right; the claims of the divisional application may need to be adapted so that none of them is substantially the same as any of the allowed claims of the parent application.


TOP