The new Patent Act will be effective as of January 1, 2013 and the Enforcement Rules of the Patent Act will be also effective on the same day. We herewith list some important amendments on the Enforcement Rules of the Patent Act for your reference:
- The paragraphs of the specification, other than in the claims or abstract, may be numbered at the time the application is filed, and should be individually and consecutively numbered using Arabic numerals, so as to unambiguously identify each paragraph. The number should consist of at least four numerals enclosed in square brackets, including leading zeros (e.g., ). The numbers and enclosing brackets should appear to the right of the left margin as the first item in each paragraph before the first word of the paragraph. (New Rule 17 III)
- If missing parts of the specification or missing drawings are filed later than the date of filing, the application shall be re dated to the date on which the missing parts of the specification or missing drawings were filed by the applicant in due course. The TIPO shall inform the applicant accordingly. However, the original filing date may be kept under the following conditions:
(1)If the missing parts of the specification or missing drawings are filed within the period required by the TIPO, and the application claims priority of an earlier application, the date of filing shall, provided that the missing parts of the specification or the missing drawings are completely contained in the earlier application, remain the filing date.
(2)Within 30 days of the official notification, the applicant may withdraw the missing parts of the specification or the missing drawings filed, in which case the re dating shall be deemed not to have been made. The TIPO shall inform the applicant accordingly. (New Rule 24)
- When an applicant submits a photocopy of the certified priority document within the statutory period, the TIPO will issue an official notice to request for supplementing the original certified priority document which is the same as the photocopied one in due course. Instead of submitting the original document, the applicant may indicate in which patent application the original document has been submitted to the TIPO. It is allowed to submit the priority document through the way of electronic exchange obtained from the foreign countries which have signed mutual agreements with the TIPO. (New Rule 26)
- When a divisional application is filed within thirty days from the date on which an approval decision for the original patent application has been served according to the Patent Act, Article 34.II(2), the parts to be divided from the original application should be the specification or drawings of the invention which do not fall in the scope of the approved claims. The original specification, claims and drawings granted by the TIPO are not allowed to be amended when filing a divisional application. (New Rule 29)
- The specification of a design shall contain the following items:
(1)the title of the design;
(2)the intended use of the design; and
(3)the description of the design.
However, if the title and drawings can clearly express the features of the design, the above item (2) or (3) is not necessarily stated in the specification of the design. (New Rule 50)
- According to the new Patent Act, Article 62.II, the license of a patent may be either an exclusive license or a non-exclusive license. In addition, the patentee may license part of the claims of a granted patent to a third party. In this regard, the kind of the license and the claims to be licensed should be stated clearly in the License Agreement. (New Rule 65)
(Source: TIPO News announced on November 9, 2012)