Hsiu-Ru Chien Elina Yu February 6 2023 TIPO amends Patent Examination Guidelines: what you need to know Lee and Li Attorneys at Law | Intellectual Property - Taiwan Hsiu-Ru Chien, Elina Yu Intellectual Property IntroductionSignature and seal verificationChange in name of inventorFiling dateInternational priority documentsDeposit of biological materialPledge of patent rightsOther amendmentsIntroductionOn 8 November 2022, the Taiwan Intellectual Property Office (TIPO) issued amendments to various chapters in Part I of the Patent Examination Guidelines, aiming to:keep the guidelines in line with the interpretation of the law; andimplement court opinions in practice.The amendments came into force on 1 December 2022. This article outlines the changes made.(1)Signature and seal verificationThe original guidelines did not specify in which form or type the signatures and seals on the various documents required to file a patent application should be and nor did they clarify whether it was acceptable to provide a signature or seal via electronic software.The 2022 amendments to section 1.2.4 of chapter 1 clearly stipulate that a signature or seal will be acceptable as long as it has a physical appearance that enables comparison. The 2022 amendments also confirm the feasibility of providing a signature or 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 or seal is "acceptable" if it has the same physical appearance as that of a natural person's signature. However, the signature or 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.Change in name of inventorUnder previous patent examination practice, inventors and applicants were subject to the details entered in the application form submitted at the time of filing. If there was a need to make any changes thereafter, documentary evidence or supporting documents had to be submitted correspondingly. The original guidelines stipulated that a change in the name of an inventor or a change in the name or designation of an applicant could be made when "the entity's identity remains unchanged" and could only be requested for reasons such as "renaming, typographical errors or translation errors".In the 2022 amendments to sections 3.1, 4.1 and 4.5 of chapter 3, adjustments are made to the documents required to be submitted and several examples are added for public reference. Example 7, added to section 4.1 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 a judgment rendered by the Supreme Administrative Court on 11 November 2021.(2) While the 2022 amendments do not provide specific examples of how to define "different applicants belonging to the same entity", reference can be made to the facts of this judgment, which concerned a dispute arising from whether:changing the patent applicant from THE NATIONAL INSTITUTES OF HEALTH to THE UNITED STATES OF AMERICA, AS REPRESENTED BY THE SECRETARY, DEPARTMENT OF HEALTH AND HUMAN SERVICES caused a change in the entity's identity.The Supreme Administrative Court held that the National Institutes of Health (NIH) was a subordinate agency under the Department of Health and Human Services (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. (Emphasis added.)Therefore, the Court ruled that "after the applicant was changed from the NIH to the HHS, the entity's identity remains unchanged".The 2022 amendments also expressly prescribe that the correction of inconsistencies present in the documents submitted at the time of filing or the correction of typographical errors does not constitute a change in applicant. For instance, if an applicant's name or designation appears different from their signature or seal, that applicant is exempt from having to pay the official fee incurred from changing their name or designation if they voluntarily request the change or make it within a statutory period upon notification.(3)Filing dateThe previous guidelines stipulated 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 was connected to what the applicant recorded 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"; the latter will not affect the determination of the filing date.In order to specify the circumstances that may affect the determination of a filing date (ie, resulting in a deferral of the filing date), the 2022 amendments to section 1.1 of chapter 5 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. (Emphasis added.)Furthermore, these circumstances are limited to three types:"change of the entity filing a patent application";"adding applicant(s)"; and"reducing [the number of] applicant(s)".International priority documentsThe 2022 amendments to section 1.5 of chapter 7 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"; anda "certification document of the allowance of EU design patent application."Deposit of biological materialWith respect to the certificate of deposit, the 2022 amendments to section 4 of chapter 8 add 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.Pledge of patent rightsOn 20 October 2022, the TIPO announced amendments to rule 67 of the Enforcement Rules of the Patent Act regarding the documents required for the establishment of a pledge of a patent right. The amendments deleted the originally required submission of the patent certificate and the required addition of pledge-related matters on the patent certificate. To align with these amendments, corresponding amendments were also made to the Patent Examination Guidelines. Accordingly, the applicant no longer need supply the patent certificate when requesting recordation of the establishment of the pledge.Other amendmentsThe wording was revised and editorial errors were corrected throughout the Guidelines to align with the law and practice of formality examinations.For further information on this topic please contact Hsiu-Ru Chien 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 Attorneys at Law website can be accessed at www.leeandli.com.Endnotes(1) For details of the 2022 amendments to the guidelines, refer to the underlined edition of each revised chapter published on the TIPO's website.(2) 2019 Shang Zi No. 1169 judgment.(3) See example 8 in section 4.1 for details.