On December30, 2020, Taiwan’s IP Office (TIPO) published a draft amendment to some provisions of the Patent Act. It substantially changes the current examination and re-examination processes concerning patent applications and invalidation cases, as well as related remedial procedures.
Currently, Taiwan has a two-stage examination system: preliminary examination and re-examination. The two-stage examination is conducted by examiners of the IP Office and is in nature a continued examination. If a decision of final rejection is issued after re-examination, the applicant may file an appeal with the Board of Appeals.
According to the draft amendment, the examination process will be simplified with the re-examination mechanism replaced by a review process, while the appeal proceedings are to be abolished. In this regard, the IP Office will set up a “Committee for Review and Dispute Resolution”, an independent body with responsibilities for, inter alia, review of patent applications formally rejected.
As a result of the change, if an application is formally rejected at the stage of preliminary examination, instead of filing a request for re-examination, the applicant will need to file a request for review with the Committee within two months from receipt of the decision.
In addition, where an action or decision made by the IP Office on a patent application could be the subject of administrative litigation defined under the current law (for example, denial of a priority claim), the draft amendment also provides the applicant with an option to file a request for review of such action/decision. If the Committee upholds the contested action/decision, the applicant can no longer file an appeal but should directly file a civil litigation with the IP and Commercial Court for judicial review.
Organization of the Committee and Review Process
The Committee will be composed of senior patent examiners or legal experts or operate as an independent adjudicatory body of the IP Office.
Preliminary Procedure and Panel Review
The review process is essentially a two-stage process: preliminary procedure and panel review. By making reference to the law and practice in the neighboring countries, the draft amendment allows the applicant to file an amendment to the rejected patent application at the time of requesting a review with the Committee. If an amendment is filed along with a request for review, the application will first go through a reconsideration procedure where the amendment will be examined by the original examiner or a new examiner. If the amended application is found to meet the patentability requirements, a Notice of Allowance will be issued while the request for review shall be deemed to have been withdrawn.
If no amendment is filed along with a request for review or the amendment filed is not deemed to render the claimed invention patentable, the application will enter a panel review process. Three or five members from the Committee will form a panel with one of them appointed as the presiding panelist.
While the review process will be conducted primarily based on the applicant’s observations/arguments in writing, oral hearing(s) may be held at the discretion of the Committee or upon request by the applicant.
All of the rejected applications will be reviewed under a de novo standard.
Stricter Time Limit for Filing Divisional Application(s)
Under the current practice, an applicant may file a request for dividing an invention patent application into two or more applications:--
(i) before issuance of the re-examination decision on an application; or
(ii) within three (3) months from the date of receipt of a Notice of Allowance issued to an application (allowed either at the preliminary examination stage or at the re-examination stage).
According to the draft amendment, it is, in principle, not allowed to file a divisional application after an application enters the review process. This has significantly shortened the time frame for filing divisional application(s).
Stricter Time Limit for Filing Amendment(s)
According to the draft amendment, an applicant may file amendments :--
(i) before receiving an Official Letter from the IP Office tentatively rejecting an application;
(ii) at the time of filing a response to the Official Letter;
(iii) at the time of filing a request for review with the Committee; or
(iv) at the time of filing a response to an Official Letter issued by the Committee during the review.
Compared with the current system, especially the provisions regarding the time limit for filing amendments at re-examination stage, the draft amendment appears to unveil a message to applicants that amendments should be filed as early as possible.
Changes to Administrative Litigations
Litigation proceedings and Court of Competent Jurisdiction
According to the draft amendment, if an applicant is dissatisfied with a decision rendered by the Committee, he/she can no longer file an appeal with the Board of Appeals but should directly file a litigation with the IP and Commercial Court to seek judicial review with the Committee named as the defendant. In addition, the litigation will shift from administrative to civil proceedings. If the litigation is dismissed and the applicant wishes to further appeal the case, an appeal should be filed with the Supreme Court, not the Supreme Administrative Court. The court shall ex officio investigate the facts and evidence of the case without being bound by the applicant’s arguments.
Adjudication in the IP and Commercial Court
In a litigation filed by the applicant of a rejected patent application, the subject of the litigation is whether Committee’s decision is legitimate. Depending on the circumstances of the case, the applicant being the plaintiff, may request the court to either “revoke or change the IP Office’s original decision and the Committee’s decision” or “order the IP Office to issue a new decision allowing the patent application at issue to mature into a patent.”
Examination of Design Patent and Utility Model Patent Applications
Like invention patent applications, design patent applications undergo substantive examination in Taiwan as well. Hence, all the proposed changes to examination of invention patent applications shall, in principle, apply mutatis mutandis to design patent applications. In addition, the grace period of six (6) months after the disclosure of the design in a printed publication or an exhibition and before filing will extend to twelve (12) months.
Since utility model patent applications are not subject to substantive examination, the changes introduced into the draft amendment have less influence on utility model patent applications. The only change is that if a utility model patent application is rejected after formality examination, the applicant may file a request for review with the Committee and subsequently a civil litigation with the IP and Commercial Court, if necessary.
Matters to be Clarified
Currently, before issuing a formal office action, the Examiner would mostly only issue an Official Letter to give the applicant an opportunity to file observations/amendments to overcome a tentative rejection and forestall a final rejection. As an application will directly go to the review process subsequent to the issuance of the first, formal rejection, the preliminary examination stage becomes an extremely important part of examination. It remains to be seen whether the IP Office will, with reference to the system and practice in other countries, give applicants more chances by issuing multiple official letters, to respond to tentative rejection.
In addition, the current provisions regarding the time limit for late filing of reasons for re-examination are quite applicant-friendly. While the draft amendment does not mention whether the same approach will apply to the time limit for late filing of reasons for review with the Committee, we anticipate that it will be regulated in the Examination Guidelines to be revised.
As noted above, it is, in principle, not allowed to file a divisional application after a patent application enters the review process. This may have a significant impact on the rights and interests of the applicants. After holding a series of public hearings, TIPO indicated that the proposed change has yet to be finalized and further modification may be expected. In addition, since an application may be allowed at the reconsideration procedure of the review process, it remains to be clarified whether in such scenario, a divisional application can be filed within three months from receipt of the Notice of Allowance.
Please see the following flow charts for a comparison between the current and to-be-revised examination systems
