On July 1, 2017, new rules for patent interviews came into effect as “the Operation Directives on Interviews for Patent Cases” (Operation Directives) were amended.
The statutory law affording the availability of an interview for a pending patent case is rooted in §42 and §76 of the Taiwan Patent Act, which is paraphrased:
“during the examination for a patent application (except for utility model) or for an invalidation action, TIPO may, upon request or on its own initiative, notify the applicant to attend an interview before TIPO, within a designated timeframe.”
Based on these statutory provisions, TIPO formulated Operation Directives as the general procedural guidance to actually conduct an interview. TIPO has occasionally made several amendments to Operation Directives in response to comments or criticism received from the interview participants or concerned public.
According to the new rule, seeking to be granted an interview, the requesting party will have to use an independent and standardized interview request form prepared by TIPO (available at https://www.tipo.gov.tw/ct.asp?xItem=545502&ctNode=7497&mp=1). In addition to demands for personal and case identifications on the standard form, the requesting party is required to specifically state the intention, purpose, and issues wished to be discussed, along with associated copies of patent claims, specification, and drawings, supporting arguments and reasoning on the merits, as well as miscellaneous matters. Since July 1 of 2017, all requests for interviews shall no longer be made by merely a paragraph or the like added to the written brief or response submitted to the Office. TIPO will only admit and process a formal request made in the said separated and standardized form.
Along with launching of the new rules, TIPO released several inquiries and answers regarding the patent interview system collected from applicants and patentees during the trial term of the new rules before these rules became officially effective.
Many of the concerned were puzzled as to the exact step in the process when an applicant can request for an interview. TIPO replied that at any point of time of pendency, from the beginning of examination to the end of prosecution, a party can request an interview, pursuant to relevant provisions in the Patent Act. Nevertheless TIPO stressed that, to maximize an interview’s efficiency, the interview should be conducted when an Office action of non-allowability has been issued. The interview request can be made when the applicant’s response, including arguments and/or claim amendments, is ready to be submitted because that is when the patentability issues are filtered and identified.
In more detail, the following illustrates the matters a potential applicant is ought to note in an interview held in respective phase of a patent application.
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- Phase A; during substantive examination but before the first OA: if for a substantive examination, the applicant may provide analysis of the technical concept(s) applied for patent; and if for a re-examination, however, the applicant should provide claim amendments and/or arguments against the grounds and citations of the rejection decision made after substantive examination.
- Phase B; before submitting a response to Office action: the applicant may wish to enquire for examiner’s opinion of patentability regarding a pending application.
- Phase C; after submitting a response to Office Action: the applicant shall provide an oral explanation to the submitted response and arguments to examiner’s raised grounds of non-allowability in an Office action. As previously noted, this is the stage when most examiners grant an interview to maximize the efficacy.
- Beyond Phase A, B, and C: Interview is not available.
In TIPO’s general practice, a first interview request will normally be granted; whereas a grant of interview for the second time and onward would largely depend on the presence of necessity. Furthermore, in the following situations an interview shall not be granted: 1) Inquiry into whether the application for patent will be allowed; 2) Raising no specific grounds of non-patentability, during an invalidation action; 3) Making a request based on causes obviously irrelevant to a case on the merits; and 4) The fact being sufficiently clear that another review is not necessary after the previous interview.
TIPO noted, during an interview, participating parties should not present new evidence or another amendment to application documents. However, for the best benefits of the participant/applicant, whether a piece of new evidence is exceptionally put into the interview agenda is dependent on if the information improves the interview proceeding and fact-finding for the case. Likewise, for a specific issue absent in the interview request form at first, TIPO’s examiner holds the discretion including or not the new issue related to the substance of the case. An interview is generally expected to be one-hour long and yet may be extendable for another hour.
As for attendance to an interview, the following persons may be present:
- TIPO’s staff of responsibility.
- Inventor, creator (utility model), or designer.
- Applicant or its employee, or applicant’s retained patent attorney, patent agent, or the attorney-at-law.
- Invalidation requesting party, patentee defending invalidation action, or their respectively retained patent attorney, patent agent, or the attorney-at-law.
- With TIPO’s permission, individuals possessing professional expertise in the field commissioned by the patent attorney, patent agent, or the attorney-at-law as in above case 4 or 5.
A foreign licensed attorney may attend an interview as an expert pursuant to case 5.
During an interview, conversation digests will be made into a separated and standardized summary sheet. Participants are required to sign on the sheet before leaving. For one’s own record, a participant may make video or audio recording of the interview, upon a notice beforehand.
After the interview, TIPO will issue another Office action or a decision concluding the examination within a month or two, if additional supplementary evidence from applicant is not necessary. However, if submission of more supplementary evidence or amendments before TIPO’s designated deadline is further demanded, TIPO’s decision or Office action will only be made in a month or two after receiving and considering the same.