After gathering public opinions for nearly one month, Taiwan’s IP Office announced on June 27, 2022 that the Examination Guidelines relating to the patent substantive examination will be amended since July 1, 2022.
The main purpose of the proposed amendment is to clarify some ambiguities in the current Examination Guidelines, which do not involve any substantial adjustments.
A brief report is as follows:
I. When there were filed an invention application and a utility model application for the same invention on the same date, and when a Decision which deemed an invalidation action against a utility model patent matured from the utility model application has been rendered but not yet finalized, how the IP Office will handle this scenario?
As a utility model application is not subject to substantive examination, it generally will mature into a utility model patent while the examination of the invention application is still pending. Under such circumstances, if a decision which deemed an invalidation action against a utility model patent has been rendered but not yet finalized, the current practice is silent on how the pending invention application will be examined.
Regarding this issue, the proposed amendment to the Examination Guidelines is as follows:
(1) Basically, the invention application shall be placed in abeyance pending the outcome of the invalidation action against the utility model patent. It is otherwise when there is clear evidence that the invention application does not meet patentability requirements, or as a result of an amendment, the invention called for in the utility model patent has become distinct from the invention claimed in the invention application.
(2) During the time period after receipt of a notice of allowance and before issuance of the Letters Patent to the invention application, an invalidation decision against the utility model patent is rendered but has not yet been made final, the examiner who examines the invention application shall withdraw the notice of allowance issued to the invention application and re-examine it according to the outline set forth in Item (1) above, so as to ensure that the examination results of the invention application and the utility model application are consistent.
II. Is it possible to amend the claims by the introduction of “disclaimer” prior to receiving the examination results?
According to the current Examination Guidelines--:
The introduction of “disclaimer” into the amended claims is allowed to overcome a rejection for not being novel, non-obvious, or not complying with the first-to-file principle in response to a prior art cited in the examination results, even though the recitation of the disclaimer per se is not directly and unambiguously derivable from the application as filed. (Please see the report published on our website in December of 2020.) However, the current examination does not make any mention of whether or not the introduction of “disclaimer” may be allowed if the applicant intends to file a voluntary amendment prior to receiving any examination results.
According to the revised Examination Guidelines --:
Prior to receiving any examination results, a voluntary amendment of the claims by the introduction of “disclaimer” may be allowed with the submission of a statement in which the prior art concerned is pointed out and why the introduction of “disclaimer” is necessary is specified.
Allowing the applicant to voluntarily amend the claims by the introduction of “disclaimer” brings more flexibility to the formulation of patent filing strategies. For example, when an applicant files a PPH (i.e. "Patent Examination Highway") request with the IP Office to expedite the examination of a patent application, it is usually necessary to concurrently amend the claims to conform to the claims approved by a foreign country. At this point, the applicant may amend the claims by the introduction of “disclaimer” to be consistent with the corresponding application.
III. Under which circumstances the applicant is allowed to rectify clerical errors?
If, after issuance of the Letters Patent, the applicant discovers that there is a clerical error, such as the inconsistency of translation of a word or a phrase in the specification, or a slip of pen that needs to be rectified, a request for rectification can be filed.
The revised Examination Guidelines will make it clear that:--
(1) It is permitted to rectify (i) the number of the drawing figures; (ii) the number of elements in the drawings; (iii) the texts in the drawings that do not comply with what is disclosed in the specification; and (iv) the inconsistency among the drawing figures.
(2) A misstatement of technical nature may also be allowed for correction. For example, if the patentee proposes to make a correction to a chemical or mathematical formula referred to in the specification or the claims, it may be regarded as a clerical error and a correction can be made if a person with ordinary skill in the technical field of the invention determines, on the basis of his usual knowledge at the time of filing the application, that the original chemical or mathematical formula is manifestly a clerical error.
IV What are the requirements for the certificate of deposit?
As Taiwan is not a member country to the Budapest Treaty, the effect of a deposit made in an International Depositary under the Budapest Treaty is generally not recognized in Taiwan. Accordingly, even though certain microorganisms have been deposited in an International Depositary in order to meet the enabling requirement, the applicant is still required to make a corresponding deposit in a domestic depositary designated by Taiwan IP Office. The certificate of deposit issued by the domestic depository must be filed within four months from the filing date or sixteen months from the earliest priority date claimed, whichever is applicable.
However, the domestic deposition mentioned above may be exempt when the deposit is made in a depository of the countries with which an agreement concerning the mutual recognition of the legal effect of the deposition was signed and has taken effect. The certificate of deposit issued from said foreign depository still needs to be filed within the statutory period mentioned above.
Up to the present, the United Kingdom, Japan and Korea have signed agreements with our country.
The revised Examination Guidelines make it clear that:--
(1) An acceptable certificate of deposit filed within the statutory period refers to the certificate showing receipt of the organisms by the depository and having a viability statement of said organisms.
(2) After a certificate of deposit issued by a depository in Japan, South Korea or the United Kingdom is filed, the examiner will examine as to whether or not there is a viability statement on the certificate. If there is any doubt, the applicant shall be notified to submit a certificate with a viability statement within the statutory period mentioned above. Otherwise, the microorganisms shall be deemed not deposited.