Jason Chuang Elina Yu November 7 2022 TIPO amends Patent Examination Guidelines to improve quality of examination Lee and Li Attorneys at Law | Intellectual Property - Taiwan Jason Chuang, Elina Yu Intellectual Property IntroductionExamination of invention patentsDisclaimersNarrowing down scope of claimsPost-grant amendmentDeposits of biological materialOther amendmentsIntroductionIn order to reflect the needs of examination practice and improve the quality of examination, the Taiwan Intellectual Property Organisation (TIPO) has issued amendments to the following chapters in Part II (Substantive Examination for Invention Patents) of the Patent Examination Guidelines:chapter 3;chapter 6;chapter 7;chapter 8;chapter 9; andchapter 14.These amendments took effect on 1 July 2022. This article summarises the highlights of the amendments.(1)Examination of invention patentsWhen an applicant applies for an invention patent and a utility model patent for the same invention at the same time, article 32(3) of the Patent Act provides that:The patent application for [an] invention shall not be granted if the utility model patent right has become extinguished or has been revoked finally and bindingly before a decision is rendered on the patent application for invention. However, in this circumstance, the Patent Examination Guidelines fail to specify how the examination of the invention patent application should proceed if an invalidation action against the previously granted utility model patent is considered well grounded (but not yet finally and bindingly revoked), either:during the examination of invention patent application; orbetween the allowance and the publication date of the invention patent.The amendment adds points (5) and (6) to section 5.7.2 of chapter 3, setting out the examination principles relating to invention patent applications under these circumstances.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 [the] 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 [evidence] against the utility model patent is deliberated.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 [the] 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.DisclaimersDuring the examination of an invention patent application, the claim(s) may be amended by a "disclaimer" – that is, a negative limitation which excludes overlaps with prior art in order to overcome a lack of novelty, novelty based on legal fiction or non-compliance with the first-to-file principle arising from the cited documents.In practice, however, an applicant who is aware of a particular prior case before receiving an office action during their domestic patent application may intend to amend the claim(s) voluntarily to exclude the overlap thereof with the prior art. To address this issue, section 4.2.2 of chapter 6 of the amendment sets out the principles of examination under such circumstances.When an applicant amends the claim(s) with disclaimers that exclude overlap with prior art before the TIPO issues an office action and 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.Narrowing down scope of claimsA description has been added to section 3.1.2 of chapter 7 of the amendment whereby in addition to cases where "some of the claim(s) referred or depended are deleted and the remaining claims are itemised", the newly added claims do not constitute the "narrowing down the scope of the claim(s)" as referred to in the restrictions on amendment after a final notice has been issued.Post-grant amendmentTo align with the content of chapter 6, a new examination principle has been added to section 6 of chapter 9 regarding the post-grant amendment in which disclaimers are used to exclude the overlap with prior art.Deposits of biological materialAccording to article 27.1 of the Patent Act:When filing a patent application for invention involving a biological material or invention utilising 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.Paragraph 2 of the same article also stipulates that an applicant shall, within four months of the filing date of the patent application, submit to the specific patent agency a certificate of deposit.With regard to the certificate of deposit, the amendment adds a new point (3) to section 4.2.4 of chapter 14. The applicant is required to submit a certificate of deposit, issued by the depository, that proves the facts of deposit and survival of the biological material. A certificate of deposit issued by a depository that is recognised by a signatory state to the Budapest Treaty meets the requirements. The applicant must pay attention to whether the certificate of deposit issued by another 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 four months of the date of application (16 months after the earliest priority date if priority is claimed).If this document is not submitted within the required period, the deposit shall be deemed not to have been made. In such circumstances, the TIPO should specify the cause(s) that made it impossible to be realised during the substantive examination, and then allow the applicant an opportunity to file a response. Subsequently, the TIPO can decide whether to reject a patent application for non-compliance with article 26(1) of the Patent Act.Other amendmentsOther amendments include discretionary wording revisions, corrections of inconsistencies and misrepresentations of the content in each chapter so as to align with the provisions of the associated laws and regulations.For further information on this topic please contact Jason Chuang or Elina Yu at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected] or [email protected]). The Lee and Li website can be accessed at www.leeandli.com.Endnotes(1) For details of the 2022amendments to the TIPO's Patent Examination Guidelines, refer to the underlined content of each amended chapter published on the TIPO's official website.