In the past, the window for filing a divisional application from an invention patent application in Taiwan was linked to the date of the applicant’s receipt of the final Office Action or Notice of Allowance and varies with the stage of examination.
If an application was allowed at the preliminary stage, a divisional application could be filed within thirty days of the date of receipt of the notice of allowance. On the other hand, for an application which had entered the reexamination stage, the window for filing a divisional application was closed upon the applicant’s receipt of the final Office Action or Notice of Allowance.
As a consequence of the implementation of the Patent Act as of November 1, 2019, the time frame for filing divisional applications is relaxed to the effect that a divisional application can be filed from an invention patent application within three months of the date of receipt of the notice of allowance. Moreover, filing a divisional application is permitted even if and when the notice of allowance is issued at the reexamination stage. Likewise, for a utility model application, filing a divisional application is possible when the application is pending or within three months of the date of receipt of the notice of allowance.
On the other hand, it is explicitly defined in the amended Patent Act that “while the claims of a divisional application should have full support from the disclosure of the parent application, a subject matter that is exactly the same as that allowed in an earlier application is not allowed to be claimed in a divisional application.” Moreover, in case a patent maturing from a divisional application possibly involves of the “double-patenting” issue, it constitutes a ground for a third party to file an invalidation action.
To tie in the local practice with the amended Patent Act, the Taiwan IP Office also correspondingly amended the Patent Examination Guidelines. The highlights of the amendments in relation to divisional applications are as follows:
- A divisional application shall be rejected during its prosecution, if it claims a subject matter the same as that allowed in its parent application.
- If a divisional application filed after issuance of the notice of allowance of an earlier application is found to embrace a claim calling for a subject matter the same as that defined in any claim of the earlier (parent) application, the divisional application shall be rejected even if the parent application is allowed to go abandoned by failing to pay the issue fee and first annuity. (This stringent and arguable requirement merits the applicant’s special attention so as not to fall between two chairs.)
- Once a divisional application is filed, it will rank in a status the same as its parent application. For instance, if the parent application is being re-examined, the divisional application will skip the preliminary examination stage and directly go into the reexamination stage.
It is still not allowed, under the amended Patent Act, to file any divisional application after issuance of the final Office Action. However, according to information open to the public, the Taiwan IP Office might relax this stipulation with reference to the practice being adopted in other advanced jurisdictions.
In the case of a sequence of divisional applications consisting of a root application followed by divisional applications, in several jurisdictions, the subject matter of the root application may also serve as a basis for comparison to determine whether the claims of the divisional application have full support. While Taiwan has not yet followed this practice, i.e. only the application from which a divisional directly derives may serve as the only basis, the method and steps used to determine whether the claims of the divisional application have full support are expected to be regulated in more detail in the Patent Examination Guidelines.
The statistics show that the number of divisional applications filed in Taiwan is steadily on the rise over the past eight years since the introduction of the doctrine of “divisional applications” into the Patent Act. The recent amendments to Patent Act to relax the time frame for filing divisional applications marks another milestone on our path to harmonize Taiwan’s patent practice with international mainstream. Expectedly, the applicant is now allowed more room to develop a streamlined filing strategy on a global basis.