Newsletter
2022 Amendments to the Patent Examination Guidelines
To stay in line with the interpretation of the law and to implement court opinions in practice, the TIPO issued amendments (hereinafter “2022 amendments”) to Chapters 1, 3-8, 14, 17, 19 and 20 of Part I “Formality Examination and Patent Right Administration” of the Patent Examination Guidelines (hereinafter “Guidelines”) on November 8, 2022, and the amendments came into force on December 1, 2022. Key points of the 2022 amendments are hereby summarized and explained as follows.
I. Chapter 1 “Procedures for Patent Application and Handling of Patent Related Matters,” Section 1.2.4 “Signature/Seal Verification”
With respect to the signatures/seals of the signers on various documents required for filing a patent application, the original Guidelines did not specify their types or forms, nor clarify whether it is acceptable to provide a signature/seal via electronic software.
The 2022 amendments clearly stipulate that a signature/seal will be acceptable as long as it has a physical appearance allowing for comparison; the 2022 amendments also confirm the feasibility of providing a signature/seal via electronic software. The 2022 amendments state that “a certification document is presumed to be valid as long as the signature/seal thereon has a physical appearance allowing for a comparison of the signer’s signature, seal or digital signature. Signatures/seals may be added to a certification document by writing or electronic software, as long as the physical appearances thereof allow for a comparison with that on the application documents. In case any doubts about the physical appearance of a signature/seal added via electronic software are raised, the Specific Patent Agency will notify the applicant to provide a file certifying the course of the digital signature or to supplement a signed paper file within a prescribed period of time.”
For instance, a signature/seal is “acceptable” if it has the same physical appearance as that of a natural person’s signature; however, the signature/seal will be deemed “doubtful” if it has a physical appearance which is the same as that printed by a computer or cannot be determined to be written by the natural person.
II. Chapter 3 “Patent Applicant” – Section 3.1 “Change of Inventor(s),” Section 4.1 “Change in Name or Designation of Applicant(s),” Section 4.5 “Change in Name of Inventor(s)”
Under current patent examination practice, inventor(s) and applicant(s) are subject to the recordations filled in the application form submitted at the time of filing. If there is a need to make any changes thereafter, documentary evidence or supporting documents should be submitted correspondingly. The current Guidelines stipulate that a change in the name of an inventor(s), or a change in the name or designation of an applicant shall be made when “the entity's identity remains unchanged,” and shall only be requested for reasons such as “renaming, typographical errors or translation errors.”
In the 2022 amendments to these Sections, adjustments are made to the documents required to be submitted, and several examples are added for public reference. Example 7 added in Section 4.1 “Change in the Name or Designation of Applicant” of the amended Guidelines specifies that “a request for change in designation of an applicant will be acceptable if different applicants belong to a same entity, and the applicants or their patent agent(s) submit a factual statement along with supporting certificates/documents.” The 2022 amendments are made with reference to the gist of the 2019 Shang Zi No.1169 judgment rendered by the Supreme Administrative Court on November 11, 2021. As for how to define “different applicants belonging to the same entity,” the 2022 amendments do not provide specific examples; however, a reference can be made to the background facts of the 2019 Shang Zi No.1169 judgment. Said judgment concerns a dispute arising from whether “changing the patent applicant from THE NATIONAL INSTITUTES OF HEALTH (hereinafter the ‘NIH’) to THE UNITED STATES OF AMERICA, AS REPRESENTED BY THE SECRETARY, DEPARTMENT OF HEALTH AND HUMAN SERVICES (hereinafter the ‘HHS’)” caused a change in the “entity's identity.” The Supreme Administrative Court held an opinion that the NIH is a subordinate agency under the HHS, and stated that “in accordance with … of the United States Federal Law, the right to apply for a patent shall be owned by the HHS (representing the U.S. government), … changing the 2nd applicant of the application at issue from the NIH to the HHS does not affect the entity's identity, i.e., the right to apply for a patent belongs to the HHS regardless of the change.” Therefore, the Court ruled that “after the applicant was changed from the NIH to the HHS, the entity's identity remains unchanged.”
In addition, the 2022 amendments also expressly prescribe that changing the applicant does not involve a correction of inconsistencies present in the documents submitted at the time of filing or a correction of typographical errors. For instance, if an applicant’s name or designation appears different from his/her signature/seal, said applicant is exempt from payment of the official fee incurred from the change in name or designation after voluntarily requesting the change or making such change within a statutory period of time upon notification (see Example 8 in Section 4.1 for details).
III. Chapter 5 “Filing Date” – Section 1.1 “Application Form”
The current Guidelines stipulate that “if the applicant makes an error on the application form which is corrected after the filing, the filing date will be subject to the date that the applicant corrected said error.” Therefore, the determination of the filing date is connected to the applicant's recordation stated on the application form. However, it should be noted that “changing an incorrect applicant to the correct applicant” differs from the abovementioned “requesting a change in the name or designation of an applicant due to renaming, typographical errors or translation errors under the condition that the entity remains unchanged,” and the latter will not affect the determination of the filing date.
In order to specify the circumstances affecting the determination of a filing date (i.e., resulting in a deferral of the filing date), the 2022 amendments are amended to read “if the applicant makes an error on the application form which is corrected after the filing, the filing date will be subject to the date that the applicant corrected said error, since the applicants before and after the correction are different.” Furthermore, the aforesaid circumstances are limited to three types set forth in a list: “change of the entity filing a patent application,” “adding applicant(s),” and “reducing applicant(s).”
IV. Chapter 7 “Priority and Grace Period” – Section 1.5 “International Priority Document and Time Period for Submission”
The 2022 amendments added “incorrect examples of international priority documents,” including a “photocopy of a full file of U.S. patent application,” “receipt of a U.S. patent application together with a copy of the specification,” “receipt of a Hague design patent application together with a copy of the specification,” and “certification document of the allowance of EU design patent application.”
V. Chapter 8 “Deposit of Biological Material” – Section 4 “Certificate of Deposit of Biological Material”
With respect to the certificate of deposit, the 2022 amendments added that “a certificate of deposit shall include viability information if such certificate is not issued by an international depositary authority under the Budapest Treaty. In the absence of the viability information, the applicant will be notified to supplement the certificate of viability within a statutory period of time; if such certificate is not submitted within the statutory period, the biological material will deemed not deposited.”
VI. Chapter 19 “Change of Patent Right” – Section 6 “Recordation of the Establishment of a Pledge,” Subsection 6.2 “Required Documents”
Regarding the documents required for the establishment of a pledge of a patent right, the TIPO just announced amendments to Rule 67 of the Enforcement Rules of the Patent Act on October 20, 2022, in which the originally required submission of the patent certificate and the required addition of the pledge related matters on the patent certificate were deleted. To stay in line with the aforesaid amendments, corresponding amendments were also made to the Guidelines. Accordingly, the applicant no longer needs to supply the patent certificate when requesting recordation of the establishment of the pledge.
VII. Other amendments
Wording revisions and correction of editorial errors were also made throughout the Guidelines to stay in line with the law and the practice of formality examination.
For details of the 2022 amendments to the Guidelines, please refer to the underlined edition of each revised chapter published on the TIPO’s website. (https://www.tipo.gov.tw/tw/cp-85-914806-9c46c-1.html)