TIPO amends the Procedural Examination Guidelines for improving patent examination quality

In compliance with the spirit of the Patent Act and practical needs, as well as to be in harmony with international patent systems, Taiwan Intellectual Property Office (TIPO) underwent a comprehensive revision to the Procedural Examination Guidelines. Revision to the part on “Principles for Patent Applicant Confirmation”, which was announced on October 21, 2010, and took effect on January 1, 2011; the remaining amendments to the Guidelines was announced and took effect on September 7, 2010. Main amendments to the Guidelines include, a) stipulating requirements for according the filing date, b) stipulating principles for patent applicant confirmation, c) stipulating the conditions of description and drawing(s) entitled to a filing date, d) revising procedures for processing patent applications in which parts of the description or drawings are missing, e) revising procedures for processing patent application in which the specification and drawing(s) are in a foreign language, f) stipulating that the figure accompanying the abstract may be specified or amended ex officio, and g) other related revisions.

Stipulating requirements for according the filing date:

According to Article 25, Paragraph 3 of the Patent Act, the filing date of an invention application is the day when the application form, the specification and necessary drawings are fully submitted (this shall apply to Article 108 for utility model patents and Article 116 for design patents). However, the term “fully” was not clearly defined in the past, resulting in the omission of applicant or missing parts of the description or drawings in some of the applications, and a filing date was given despite these incompletions. This amendment clearly stipulates that the filing date is obtained when the “patent applicant has filed documents that contain a complete disclosure of the invention and indicated his intention of applying for a patent.”

Stipulating the principles for confirming patent applicant:

A patent application should be filed by the person who has the application rights to indicate his intention of applying for a patent. Hence, the application should clearly state the name or entity of the applicant, and such applicant must be the person who has the rights to apply for the patent. In the past, there have been cases where requests were made to correct the applicant’s information, claiming that such information was mistakenly included at the time of filing. There have also been cases where information about the applicant is not provided at the time of filing. However, if the applicant’s information is missing from the application, or if the applicant on the application form is not the person with the rights to apply for the patent, then the person’s intention and its legal effect could not be confirmed, and the application would be rejected.

This amendment clearly stipulates that if the applicant’s information is missing from the application, then the application would be rejected. However, if the information is supplemented before the rejection action is taken, then the day when the information is supplemented shall be the filing date. The applicant shall be the one indicated on the application form when it was first submitted. Shall the applicant’s information need to be changed after the patent application is filed, then a proof of legality shall be submitted to apply for patent assignment and change of ownership. If changes to the applicant’s information of an application are requested after the application is filed on the ground that such applicant is not the person entitled to file, then the filing date shall be the day when the applicant’s information is confirmed.

Stipulating the conditions of specification to accord a filing date:

The applicability of the specification for obtaining the filing date should be determined by the “description,” “claims” and “drawings”. Omission of the title of the invention, abstract may be supplemented and hence do not affect the filing date. Drawing(s) may be omitted if the disclosure of the invention can be completely disclosed without the assistance of drawing(s); if the application contains drawing(s), then it is considered necessary drawing(s). Omission of necessary drawing(s) would result in the incomplete disclosure of the invention, henceforth a filing date might not be accorded.

Revising procedures for processing applications in which parts of the description or drawing(s) are missing:

In the past, missing pages in the description or omission of drawing(s) may be supplemented during the procedural examination phase, and that would not affect the filing date. However, this practice is not in line with the First-to-File Rule. This amendment is thus made to be in compliance with the provision of Rule 21 of the Implementing Regulations of the Patent Act and in harmony with relevant regulations in other countries. The purpose of the amendment is to stipulate the processing procedures for applications in which parts of the description, claims, or drawings are missing, and to also clarify the filing date shall be the day the missing parts are supplemented. If the applicant files such supplementation based on the claimed priority, the original filing date shall then be the filing date once the supplementation is completely contained in the claimed priority. Furthermore, the applicant may claim, through a written reply, that the missing parts do not affect the disclosure of the invention and thus no supplement is necessary. In which case, the filing date shall be the day the original application was filed, but whether the disclosure is sufficient shall be determined by substantial examination.

If the applicant fails to submit a written reply and also fails to make the necessary supplements, then the application would be rejected for missing or incomplete specification or drawing(s).

Revising procedures for processing patent application in which the specification and drawing(s) are in a foreign language:

If applications are filed in a foreign language, the Chinese translation should conform with the original text of filing. If different foreign language texts are submitted at the same time, one of which should be indicated as the legal one; if a different foreign language text is submitted at a later time, the original submission shall prevail. The foreign language text may not be corrected; Rule 21 of the Implementing Regulations of the Patent Act applies to foreign language text. This stipulation has clarified some of the issues related to the uniformity of translation, different foreign language texts, and correction/supplement of foreign text that were seen in the past. Also in the past, Rule 21 of the Implementing Regulations of the Patent Act does not apply to applications filed in foreign language, however, pursuant to Article 25, Paragraph 4 of the Patent Act, if the specification or drawing(s) is submitted in a foreign language and the Chinese translation is supplemented within the specified period, then the filing date shall be the day the foreign language text is submitted. This stipulation is similar in nature to the filing date for submitting Chinese text as stated in Paragraph 3 of the same Article. Since procedures for handling missing pages in the Chinese text are stated in Rule 21 of the Implementing Regulations of the Patent Act, this also applies to foreign text in the event of missing parts of description or drawings.

Stipulating that the figure accompanying the abstract may be specified or amended ex officio:

If the invention application contains drawing(s), the applicant should indicate the figure of the drawings accompanying the abstract. The purpose of such figure is to expedite patent search result such that users can rapidly examine the content of a patent. In the past, if the figure accompanying the abstract was not indicated by the applicant or if the indicated figure was not appropriate, then the deficiency would not be corrected. This made it a disadvantage for later patent search and use.

This amendment stipulates that when an application contains drawing(s), the applicant must indicate a figure accompanying the abstract. If the applicant fails to do so or if the indicated figure is inappropriate, the competent patent authority may specify one ex officio.

Other related revisions:

Stipulating that if the application is withdrawn before a first notice of substantive examination is issued, then the application fee for substantive examination or re-examination may be refunded;

Stipulating that invention patent applications may have parts of their preliminary examination fee refunded if parts of the claims are amended or deleted before the first notice is issued;

Stipulating an ROC application which had been claimed priority that has not been withdrawn may be divided if it does not affect the legality of the priority claim;

Stipulating the description items of the specification;

Stipulating an associated design is required to be filed concurrently with the original design patent when applying for an assignment for patent right or ownership of application; the applicant needs only pay one alteration fee.

TIPO believe these revisions would be more suitable for the domestic patent system and conform to international regulations, allowing for more precise implementation and thereby enhancing procedural examination quality and maintaining legality and fairness of application.

Source: http://www.tipo.gov.tw/en/News_NewsContent.aspx?NewsID=5009

 

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