Examination overhaul is good news for applicants in Taiwan

The Taiwan Intellectual Property Office has announced revisions to its patent examination guidelines. The new rules and notes are designed to enhance the quality of patent examinations by unifying standards.

Consistent results for patent and utility model applications for the same invention

Where an application for a utility model is deemed invalid during the examination of an invention patent application for the same invention, but this decision is not yet final binding, the examination of the patent application should remain pending until the administrative remedy of the invalidated utility model is affirmed.

Under such circumstances the examination of the patent application can be continued thereafter based on the evidence supplied as to why the utility model was invalid. If the utility model is still found to be invalid (and the decision is yet to be finalised) after the approval of the invention patent application but before the issuance of the patent, the examiner should withdraw this approval and reopen the examination of the invention patent application based on the evidence for invalidating the utility model.

Permission for omissions

Applicants may amend claims by negative limitation to exclude any overlap with prior art before an office action is issued. To do so, they must submit prior art documents and reasoning as to why the claimed content that overlaps with the prior art should be excluded from the claimed invention, if said content has not been already disclosed in the originally filed description, claims or drawings. If it has, applicants can file amendments without having to resubmit the prior art document. Failure to submit the prior art document and reasoning will result in the amendments being deemed to be new matter. Only the prior art document threatening novelty of the claimed invention or failing to comply with the first-to-file principle qualifies as prior art in such circumstances.

Applicants may not amend claims by negative limitation using a prior art document that has the same filing date as the patent application. In addition, if the claimed content destroys public order or morality (eg, it involves a tool for creating harmful drugs and a method using this tool, or allows cloning and a method for cloning humans, or a method for changing the genetic properties for human reproduction) then the claims shall be amended to exclude the claimed content.

Permission for post-allowance amendments by disclaimer

In the same way, patentees may file post-allowance amendments to claims by negative limitation to exclude any overlap with prior art. To do so they must submit the prior art document and explain why the claimed content for disclaimer overlapped with the prior art if it was not disclosed in the originally filed description, claims or drawings. Failure to submit the prior art document and reasoning will result in the post-allowance amendments being deemed to be new matter. Only prior art document threatening novelty of the claimed invention or failing to comply with the first-to file rule qualifies as prior art under such circumstances.

When to adopt the first-to-file principle

Under the principle of first to file, a patent is granted to the applicant who files an application first out of three or more applications, regardless of whether these have different filing dates or were filed by different applicants. All invention patent applications undergo substantive examination; the principle of first to file is adopted with the prerequisite that a request for substantive examination of the application has already been filed.

Biological inventions

Applicants for patents for biological inventions should submit documentation proving that any biological materials are stored in a depository designated by a foreign country within its territory exist and are viable. If the applicant fails to submit such documentation within a specified period, the examiner shall give it an opportunity to reply by issuing an office action (explaining why the invention cannot be carried out by a person ordinarily skilled in the art) before a rejection decision is made.