Newsletter
New Amendments to the TIPO’s Patent Examination Guidelines in 2022
In order to timely reflect the needs of examination practice and to improve the quality of examination, TIPO put out an advance notice that the amendments to Chapter 3, Chapter 6, Chapter 7, Chapter 8, Chapter 9, and Chapter 14 of Part II Substantive Examination for Invention Patent of the “Patent Examination Guidelines” will be effective as of July 1, 2022. This article hereby summarizes highlights of this amendment as follows:
1. Chapter 3 “Patentability” - Section 5.7.2 Notes for Examination
When an applicant applies one creation for both invention patent and utility model patent at the same time, Article 32, Paragraph 3 of the Patent Act provides that “The patent application for invention shall not be granted if the utility model patent right has become extinguished or has been revoked finally and bindingly before a decision is rendered on the patent application for invention.” Nevertheless, what the Patent Examination Guidelines does not specify is how the examination of the invention patent application for one creation applied for both invention patent and utility model patent at the same time should proceed if an invalidation action against the previously granted utility model patent is considered well-grounded (but not yet revoked finally and bindingly) during the examination of invention patent application or between the allowance and the publication date of the invention patent.
The amendment adds points (5) and (6) to the chapter 5.7.2 "Notes for Examination," providing the examination principles of invention patent applications under the two circumstances described above.
According to the newly added point (5): “In the examination of an invention patent application, if an invalidation against its previously granted utility model patent of the same creation has been considered well-grounded but not yet revoked finally and bindingly, the application result for invention patent should be consistent with the determination result of the utility model patent with regard to the same creation. In principle, the examination of the invention patent application shall not proceed until the administrative remedial proceeding in relation thereto becomes final and binding. However, depending on the circumstances of the case (e.g., the evidence is clear enough to conclude that the invention lacks patentability) or changes in circumstances (e.g., the applicant amended the claim(s), and the creation is no longer the same), the patent examiner may proceed to examine the invention patent application after the invalidation evidences against the utility model patent is deliberated.”
On the other hand, according to the newly added point (6): “if an invalidation against its previously granted utility model patent of the same creation has been considered well-grounded but not yet revoked finally and bindingly during the time between the allowance and the publication date of the invention patent, the examination results for the utility model patent and invention patent of the same creation should be consistent. Under this circumstance, the patent examiner shall revoke the approval decision for the original invention patent application and resume the examination, whose principle adopted is identical to that referred in the preceding paragraph.”
2. Chapter 6 “Amendment during examination” - Section 4.2.2 Permissible deletions
During the examination of an invention patent application, the claim(s) may be amended by a "disclaimer," a negative limitation which excludes the overlap with prior art, in order to overcome the lack of novelty, the lack of novelty based on legal fiction, or the nonconformity to the first-to-file principle arising from the cited documents. In practice, however, an applicant, having been aware of a particular prior case before receiving an office action during his/her domestic patent application, may intend to amend the claim(s) voluntarily in order to exclude the overlap thereof with the prior art. To address this issue, the amendment provides for the principles of examination under such circumstance.
That is, when an applicant amends the claim(s) with disclaimers which excludes the overlap with prior art before TIPO issues an office action, if the content disclaimed has not been disclosed in the specification, the claim(s) or the drawings, the prior art to be disclaimed and the reasons for the disclaimer shall be provided. Otherwise, it shall be deemed as an introduction of new matters.
3. Chapter 7 “Office action and Publication” - Section 3.1.2 Narrowing down the scope of the claim(s)
A description is added to the amendment. In addition to the case where "some of the claim(s) referred or depended are deleted and the remaining claims are itemized,” the new-added claim(s) does not constitute the "narrowing down the scope of the claim(s)" as referred to the restrictions on amendment after a final notice has been issued.
4. Chapter 9 “Post-grant amendment” - Section 6 Notes for Examination
To align with the content of Chapter 6, a new examination principle has been added regarding the post-grant amendment in which disclaimers are used to exclude the overlap with prior art
5. Chapter 14 “Biology-related inventions” - Section 4.2.4 Notes for deposit of biological material
According to Article 27, Paragraph 1 of the Patent Act, “When filing a patent application for invention involving a biological material or invention utilizing a biological material, the applicant shall, no later than the filing date, make a deposit of the biological material with a domestic depository designated by the Specific Patent Agency. No deposit is required if the biological material involved can be easily obtained by persons having ordinary skill in the art.” In the Paragraph 2 of the same article, it also stipulates that an applicant shall, within 4 months after the filing date of patent application, submit to the Specific Patent Agency a certificate of deposit.
In regard to the certificate of deposit, the amendment adds a new point (3) to Section 4.2.4 “Notes for deposit of biological material” in Chapter 14. The applicant is required to submit the certificate of deposit issued by the depository that proves the fact of deposit and the fact of survival of the biological material. The certificate of deposit issued by a depository recognized by a signatory state to the Budapest Treaty meets the requirements in essence; the applicant shall pay attention to whether the certificate of deposit issued by other depository can prove the survival of the deposited biological material. If not, the TIPO will notify the applicant to submit a supplemental survival certificate within 4 months after the date of application (16 months after the earliest priority date if priority is claimed.) If such document is not submitted within the preceding specified time period, the deposit shall be deemed not to have been made. Given the circumstance described above, the TIPO should specify the cause(s) which makes it impossible to be realized during the substantive examination, and then allow the applicant an opportunity to file a response. It is after these two steps are fulfilled that the TIPO can decide whether to reject a patent application for non-compliance with Article 26, Paragraph 1 of the Patent Act.
6. Other amendments
Other amendments include discretionary wording revision, correction of inconsistencies and misrepresentations of the content in each chapter and the like so as to align with the provisions of the associated laws and regulations.
For details of the amendments to the TIPO’s Patent Examination Guidelines in 2022, please refer to the underlined content of each amended chapter published on the TIPO’s official website (https://www.tipo.gov.tw/tw/cp-85-910484-c6f3d-1.html).