Revised Operation Directions for Third-Party Observations

Like many other jurisdictions in the world, the “third-party observations” doctrine has been implemented in Taiwan for years. The purpose is to give the general public the opportunity to notify the IP Patent Office of any prior art information that might be of relevance in determining the novelty and/or inventive step of an invention.

As the third party does not become a party to the examination procedure, he may request that his identity be kept anonymous and all prior art references known to him and submitted to the IP Office be in confidence. Therefore, there is almost no way for the applicant to know if and when there has been filed a submission for third-party observations even after he receives a notice of rejection in which all relevant prior art references, possibly including those submitted by a third party, are cited.  On the other hand, the Examiners’ motivation to include third-party observations in their examination process is likely to be thwarted by the lack of norms and standards for drafting the observations.

In view of the drawbacks inherent in the current practice, the IP Office, after seeking opinions from the pubic, has made a determination to modify the relevant operation directions. The revised directions, taking effect from September 1, 2020, are substantially as follows:

  • First, when filing a submission for third-party observations against an invention application, a third party can no longer request that his observations and the supporting prior art references be kept confidential.
  • Second, the third party needs to file a list of the prior art and mark the texts within the paragraphs in the prior art references that establish the relevancy between the concerned invention and the prior art. The list of the prior art will be made open for public inspection after the application is laid-open.
  • Third, the revised directions set out clearly the format in which third-party observations must take so that the observations can be articulated in a structured and concise manner for easy understanding and the benefit of examiners.
  • Fourth, the IP Office ought to give the applicant a timely notification when a submission for third-party observations is filed. However, under the circumstance that the IP Office does not, on its initiative, provide to the applicant copies of the prior art references or the observations filed by a third party, the applicant needs to file a request for reviewing the relevant file. If necessary, the applicant may file an argument against third-party observations as a defense.  

As a consequence of this change in practice, the applicant will be timely informed of the contents of third-party observations and is hence able to make informed decision at an earlier stage regarding how to respond or revise the claims to stay away from the prior art references.