For a utility model patent application subject to only formality examination in Taiwan, in accordance with Articles 109 and 43(II) of the Patent Act, the applicant still can, either on his/her own initiative or upon notification issued by Taiwan Intellectual Property Office (“TIPO”), amend the patent application during examination without introducing new matters. However, after the utility patent application is granted, the applicant can merely apply for a post-grant amendment under limited circumstances. Although the Patent Act Amendment, which will take effect in November, 2019, allows more occasions than ever for the applicant to file post-grant amendments during invalidation proceeding, application for technical evaluation report, or litigation, the limitation of post-grant amendment is much stricter than that of pre-grant amendment in terms of allowable initiative and timing of filing, as well as acceptable content of amendment. Therefore, in order to seize the opportunity of more freely amending a utility model application, it is advisable for the applicant to forecast when the application will be approved and understand how TIPO determines the cut-off time for the pre-grant amendment. A recent Intellectual Property Court (hereinafter referred to as “IP Court”) administrative decision, 107 Xing-Zhuan-Su- No.90, deals with this issue.
According to said court decision, after the formality examination, TIPO approved the subject utility model patent application on May 7, 2018, and issued its written examination decision by way of electronic service to the applicant at 10:19:54am on May 8, 2018. A few hours later, the applicant applied electronically for a pre-grant amendment at 18:58:31pm on the same date, asserting that the effective date of approval decision shall start from the next day of electronic service. TIPO refused to accept the applicant’s amendment for the reason that the approval decision had already been made before the applicant filed the amendment application.
IP Court interpreted Article 109 of the Patent Act regarding pre-grant amendment, which stipulates “When conducting formality examination of a patent application for utility model, the Patent Office may, upon request or by ex officio, notify the applicant to amend the description, claim(s) or drawings within a specified time period,” holding that the objective of the pre-grant amendment of utility model patent is to make the disclosure of the application more complete, and to facilitate the examination according to the legislative purpose of Article 109. Therefore, the specified time period for an applicant to file an amendment should be when TIPO still examines the same. In other words, the applicant would not be allowed to file the pre-grant amendment upon TIPO makes its approval decision.
Furthermore, according to the “Regulations Governing the Implementation of Filing Patent Applications and Services by Electronic Means,” TIPO would use an E-mail to notify the applicant or patent attorney to download the electronic official documents through the electronic platform, and deem the document is served when the applicant or attorney downloads the same. Thus, the electronic official document is effective upon its service instantly. IP Court then held that the aforesaid electronic service not only determines the time for serving more accurately but also reduces the labor, time and cost of patent applications, and that the electronic service is also helpful to clarify whether a pre-grant or post-grant amendment could be filed.
In modern digital era, the specific times of service for patent applications can be precisely measured in the unit of seconds. Therefore, applicants or patent attorneys should be cautious to manage the filing schedules of pending applications, especially for utility model applications that are only subject to formality examination and could be granted very quickly in Taiwan.