Newsletter
"Operational Directions for the Processing of Third-Party Observations on Invention Patent Applications"; Effective 1 September 2020
On 24 July 2020, the Taiwan Intellectual Property Office (hereinafter "TIPO") announced a draft of “Operational Directions for the Processing of Third-Party Observations on Invention Patent Applications” (hereinafter “Operational Directions”). After public consultation, the Operational Directions were officially issued on 25 August 2020 and came into effect on 1 September 2020. It had already been common practice for third parties (i.e. anyone other than the applicant of the invention patent application) to submit statements to the TIPO, with evidence attached, to provide grounds challenging the eligibility of an invention patent to be granted. However, not until the amendment of Article 39 of the Enforcement Rules of the Patent Act on 9 November 2012 were the legal grounds for submission of third-party observations officially established. The article was further amended on 24 June 2020 to relax the timing restrictions on submitting third-party observations. The above-mentioned Operational Directions stipulate further details in this regard.
According to the Operational Directions, before the examination decision for an invention patent application is rendered, if a third party considers the invention patent application to violate Article 46 of the Patent Act, which lists the grounds on which a patent should not be granted, the third party may submit to the TIPO, in writing or via e-filing, a "Third-Party Observation Brief" attaching a list of citations, arguments and relevant materials. However, where the observation is not clear or specific, not relevant to the patent application concerned, or the application has been withdrawn or dismissed, etc., the TIPO has the authority not to take the third-party observation into consideration.
In the event of two applications filed for the same invention (one for invention patent and the other for utility model patent), after the utility model patent of the case has been granted and published, the third party is still allowed to submit observations for the pending invention patent application.
It should be noted that while the Operational Directions require the TIPO to inform the patent applicant of the third-party observation so that the applicant can respond and submit rebuttals, the TIPO is not obliged to inform the third party of final disposal results or decisions on whether to grant the invention patent. Moreover, after the subject invention patent is laid open or published, the "list of citations" submitted with the third-party observation will be published on the TIPO's Patent Public Information System.