Newsletter
Third Party Observations Can Be Submitted Prior to Laying-Open
Since the inception of laid-open patent applications, Taiwan Intellectual Property Office (TIPO) has allowed any party to provide relevant materials to support rejection of subject patent applications before the examination decision is rendered. On November 9, 2012, referring to patent practice in Japan and China, TIPO clearly stipulated this long-running practice in Article 39 of the Enforcement Rules of the Patent Act, which states that “Subsequent to a patent application being laid open but prior to an examination decision being rendered, any person(s) considering that the claimed invention should not be granted a patent may submit their opinions to the Patent Agency, along with reasons and evidence.”
Having sustained the foregoing provision for several years, the TIPO amended the rule on June 24, 2020 by deleting the original restriction that submission of reference materials is only permitted after a patent application is laid open. According to the amended rule, as long as the examination decision has yet to be rendered, any person(s) considering that the claimed invention should not be granted a patent may submit their reasons and supporting evidence to the TIPO.
It is advisable for enterprises or individuals to make good use of the described system as part of an overall competition strategy.