Newsletter
Revisions of the Pantent Substantive Examination Guidelines in 2021
To promptly respond to the needs of patent examination practices and improve the quality of patent examination, the Intellectual Property Office (TIPO) has recently given an advance notice of revisions of the Patent Examination Guidelines effective as of July 14, 2021, including Chapter 1 to Chapter 6, Chapter 10, Chapter 11, Chapter 13, and Chapter 14 of Part II Substantive Examination for Invention Patents, Chapter 1 and Chapter 5 of Part III Substantive Examination for Design Patents, Chapter 3 of Part IV Formality Examination for Utility Model Patents, as well as Chapter 1 of Part V Invalidation Proceedings. This article hereby summarizes the revised parts with substantial changes, as follows:
1. Part II, Chapter 1 (Description, Claim(s), Abstract, and Drawings)
The newly revised Patent Examination Guidelines add three do’s and don’ts with regard to the examination of the manner in which a claim is disclosed:
(1) An independent claim shall state the designation of the subject matter as claimed, which shall not be too general or brief. The subject matter denoted merely by expressions such as an article, a device, or a method is categorized as an undesignated subject matter;
(2) Where an independent claim of an invention is presented in two-part form, it shall contain expressions such as characterized in that, wherein the improvement comprises, or other similar expressions, while a dependent claim does not need to do so; and
(3) Referring to the corresponding reference sign(s) in the drawing(s), in which the technical feature of a claim is followed by the reference sign(s) placed in parentheses, will not cause the claim to be unclear (Section 2.6, do’s and don’ts of patent examination).
2. Part II, Chapter 2 (What Is An Invention? )
The newly revised patent examination guidelines explicitly stipulate that although a mathematical method does not satisfy the definition of an invention, an invention which uses the mathematical method to optimize the workload distribution on a computer network shall not be considered inconsistent with the definition of an invention merely because it is involved with a mathematical method (Section 1.3.4, those not utilizing the laws of nature). In addition, the newly revised patent examination guidelines expressly specify the statutory exclusion of diagnostic methods for the treatment of humans or animals as prescribed under Article 24 of the Patent Act, including all steps from data obtainment to diagnosis (Section 2.3.1, diagnostic methods for the treatment of humans or animals).
3. Part II, Chapter 5 (Priority) relaxes restrictions on the grace period as well as patterns of disclosure which may allow for requesting for a grace period
The grace period granted for invention and utility model patent applications has been extended from six (6) months prior to the date of filing a patent application to twelve (12) months when the Patent Act and the Enforcement Rules of the Patent Act were amended in 2017. In addition, restrictions on patterns of disclosure which may allow for requesting for a grace period have also been relaxed without restrictions on ways of disclosure involved. On the top of that, a disclosure made by or against the applicant’s will shall not be deemed as one of the circumstances that would preclude the grant of an invention patent or a utility model patent, but the intentional publication in a gazette made in this country or a foreign country related to patent application is still not qualified.
As the amendment to the foregoing legal articles has been adopted when the revisions of Part II, Chapter 3 (Patentability) were made in 2017, this time Part II, Chapter 5 is revised to provide for the extension of the grace period and the relaxation of patterns of disclosure.
4. Part II, Chapter 6 (Amendment during examination) further restricts the circumstances allowed for disclaimer amendment during examination or post-grant prosecution
Given that the examination of disclaimer amendment during examination or post-grant prosecution has always been less stringent in Taiwan’s examination practices, the TIPO has expressly restricted in the 2021 revisions the circumstances under which disclaimer amendment during examination or post-grant prosecution is allowed so as to avoid abusive use of disclaimer amendment during examination or post-grant prosecution by applicants or patentees:
(1) Where the disclaimer amendment during examination or post-grant prosecution is made to overcome the lack of novelty indicated by references cited;
(2) Where the disclaimer amendment during examination or post-grant prosecution is made to overcome the lack of fictitious novelty indicated by references cited;
(3) Where the disclaimer amendment during examination or post-grant prosecution is made to overcome the noncompliance with the first-to-file principle indicated by references cited, but the references cited with the same filing date are not qualified for the said amendment; and
(4) Where the disclaimer amendment during examination or post-grant prosecution is made to exclude a subject of statutory exclusion, such as a disclaimer of the human part in claim(s) on the object or a disclaimer of the step(s) applied to a living human body or animal body in claim(s) on the means.
5. Part II, Chapter 6 (Amendment during examination) also requires that the following conditions must be met if an alteration of the maximum and minimum values in claim(s) is to be made:
(1) The altered maximum and minimum values have already been disclosed in the description, claim(s), or drawing(s) submitted for the patent application; and
(2) The altered value range has been included in the value range disclosed in the description, claim(s), or drawing(s) submitted for the patent application. Two more embodiments are included in this amendment for clarity.
6. Part II, Chapter 10 (Division and Conversion)
The newly revised Patent Examination Guidelines explicitly stipulate that in the event that an applicant who made declarations in respect of his earlier patent application for an invention and utility model for the same creation on the same date, and later requested for division of said patent application for an invention, while claiming that said divisional patent application is a correct continuation of said utility model patent, said divisional patent application is allowed to cite the earlier declaration in respect of the patent application for the invention, and is limited to one divisional patent application. However, the applicant should make a declaration of the citation when filing the divisional patent application. Making a supplementary statement of the citation afterwards shall not be allowed (Section 1.3, effect of a divisional application).
7. Part II, Chapter 13 (Pharmaceutical-related Invention)
The newly revised Patent Examination Guidelines explicitly stipulate that what differentiates the subject matter of a selection invention from prior art is that a selection invention claims individual elements, sub-groups or sub-ranges which are not explicitly mentioned in a larger, known group or range of the prior art. Namely, the statement that the selection needs to be purposeful has been removed from the 2021 Patent Examination Guidelines (Section 5.3.1.5, selection inventions of chemical compounds).
8. Part V, Chapter 1 (Invalidation of patent rights) adds a new section 3.3.2 on hearings:
In the early years, patent invalidation actions in Taiwan were examined based on written documentation/evidence submitted. In order to let the parties fully express their opinions during the examination of patent invalidation cases, and to simplify the procedures for subsequent administrative remedies, the TIPO published The Program for Hearing Patent Invalidation Cases for implementation on March 30, 2018, and then published the amendments to the said Program respectively on August 5, 2019 and February 8, 2021. The addition of a new section 3.3.2 on hearings in the revisions of the Patent Examination Guidelines in 2021 aims to expressly stipulate that the provisions of The Program for Hearing Patent Invalidation Cases shall be followed in holding hearings.
9. Part V, Chapter 1 (Invalidation of patent rights) also amends the principles with regard to the intention of the court's judgment, new grounds and fresh evidence upon the TIPO’s re-examination of the invalidation cases whose original dispositions were revoked due to new grounds or fresh evidence which do not appear until the administrative remedial proceedings thereof:
(1) If the judgment which revoked the original disposition of a patent invalidation case fails to demand performance of any obligation by the Specific Patent Agency, the patent invalidation case shall return to the state where a decision is not yet rendered. As for the new grounds or fresh evidence that are not raised by the invalidation requester during the invalidation proceedings until the administrative remedial proceedings, there is no need to notify the parties to provide their responses because they have sufficiently argued with each other during the administrative litigation proceedings.
(2) If the intention of the court's judgment on the revocation of the original disposition of an invalidation case is simply to order the Specific Patent Agency to re-examine the invalidation case in accordance with the judgment opinions of the court, then the Specific Patent Agency shall proceed to do so, and the matters not covered by the judgment opinions of the court do not, in principle, require any further investigation. However, if the intention of the court's judgment indicates that there is still relevant evidence to be clarified or a further investigation is required, the Specific Patent Agency may, as it deems necessary, notify the invalidation requestor to submit comments or the patentee to provide a response or a supplementary response within a specified time period. If late submission of any comment or response occurs, the Specific Patent Agency may then proceed to render a decision thereof.
For further details of the newly-revised 2021 Patent Examination Guidelines, please refer to the underlined edition of each revised chapter posted on the TIPO's website.（https://www.tipo.gov.tw/tw/cp-85-894060-9c1aa-1.html）