Newsletter
MANUAL OF PATENT PROCE-DURE EXAMINATION AN-NOUNCED
For the first time, Taiwan has a written set of rules to help with patent examinations. These guidelines will avoid misunderstandings that delay the processing of applications. The Man-ual of Patent Procedural Examination an-nounced by the Ministry of Economic Affairs on 17 May 2005 and taking effect on 20 May 2005 is the only procedural examination manual adopted in Taiwan. The following summarizes the main points of the Manual.
Originals of evidentiary documents required by the Patent Act and its Enforcement Rules should be submitted. However, the concerned parties may submit copies of said documents together with an undertaking that such copies are true copies of their originals. Where evi-dence submitted to support a cancellation case is a reproduced document, it is necessary to prove that the reproduced document is a true copy of its original.
According to the Patent Act, a written appli-cation, a specification and necessary drawings are required for obtaining a filing date of a patent application (including an invention or a new utility model application). As to a new design patent, a specification with drawings is needed to obtain a patent filing date. More-over, the date on which a specification and the necessary drawings prepared in a foreign language are submitted should be deemed the filing date if their Chinese version is submitted within a specified time limit. Otherwise, the patent application will not be accepted. If, however, the Chinese patent text is submitted after the time limit but prior to the date on which the Intellectual Property Office (IPO) issues a decision dismissing the patent appli-cation, the date on which the Chinese patent text is filed should be deemed the filing date.
Where a specification and necessary drawings prepared in a foreign language are submitted, such a specification should indicate at least three parts, i.e., the title, the written descrip-tion of the invention and the claim. New de-sign specifications and drawings prepared in a foreign language should at least specify both the title of the new design article and its drawings. Otherwise, the date of filing the drawings should not be deemed the filing date.
In case a specification is written in simplified Chinese characters used in China, the IPO should notify the applicant to submit a Chi-nese specification prepared in the traditional Chinese characters used in Taiwan, but this will not affect the filing date.
Where there are missing pages or omissions in a specification or drawings, and if the missing portion can be found in its corresponding pri-ority application, the applicant should be permitted to supplement the specification or drawings, and the original filing date will be maintained. If the missing pages or omissions are not necessary as deemed by the applicant, the applicant may file a response declaring that the omitted portion is unnecessary, and submit a complete specification, and the original filing date will be maintained. The issue of whether or not the patentable re-quirements will be affected will be examined during the substantive examination procedure.
If there is any discrepancy between the title stated on the written application and that set forth in the specification, and if the applicant fails to make any supplements or file a re-sponse within the specified time limit, the title shown in the specification should prevail.
Drawings should be produced clearly based on engineering drawing preparation methods. Otherwise, they will be handled as follows:
1.In case there are any illegible drawings, a notification for supplement will be issued. If no such supplement is made within a specified time limit, the patent application will not be accepted.
2.In case there is a clear drawing that is not prepared based on the relevant engineer-ing drawing preparation methods, a noti-fication for supplement will be issued. If no such supplement is made within a specified period, where it is an invention patent, it should enter into a "laying open" procedure, and if a substantive examina-tion is requested, it will be under substan-tive examination; where it is a new utility model patent, the patent application will not be accepted.
In principle, only one designated representa-tive drawing (figure) is needed for an inven-tion patent application. However, depending on the specific technical contents involved, more than one representative drawing (figure) may be designated. Where there is no repre-sentative drawing (figure) designated or there is no brief description regarding the symbols of the components and symbols of the drawing, a notification for supplement will be issued. In case no supplement is made within a specified period, it will enter into the "laying open" procedure.
Where an applicant for patent application is changed due to patent ownership transfer, the agreement for such transfer or an Assignment issued by the assignor should be submitted to the IPO. If such transfer is caused by the ac-quisition and merger of a company, the con-cerned evidentiary document regarding such acquisition and merger should be submitted. Should such change arise from succession, the concerned death certificate and document proving the inheritance should be submitted. In case the required Assignment signed by an inventor is unavailable, an affidavit or other pertinent evidentiary document may instead be submitted.
If a document submitted by an applicant is a world Assignment signed by the inventor to prove the ownership of the assignee through-out the world with respect to the involved in-vention or creation, such document should be accepted and there is no need to separately sign a document for patent filing purposes in Taiwan by the assignee.
Matters triggering the refund of fees for patent applications should be limited to the follow-ing:
1.Where an applicant makes an overpay-ment or a wrong payment, he should be entitled to apply for a refund.
2.Should the IPO fail to complete the ex-amination within a statutory period, the applicant may apply for a termination of the examination. Refund of fees paid should be made upon a termination of the examination by the IPO.
3.Other circumstances under which the concerned application should not be ac-cepted in accordance with the Patent Act as a result of a default in complying with a statutory period.
An applicant may submit a written application to the IPO to withdraw his patent application. In case of two or more co-applicants, an ap-plication for withdrawal must be jointly ap-plied for by all the co-applicants. An applicant may not revoke his application for patent ap-plication withdrawal after the IPO approves the patent withdrawal application. Neither an application for substantive examination nor an application for technical report of a new utility model patent may be withdrawn.
When an application for adding an inventor is filed, official fees, a written application, an Assignment signed by the added inventor, a letter of consent executed by other co-inventors, or an Assignment re-signed by all the co-inventors must be submitted to-gether with other required documents, if any. If an application for deleting an inventor is filed, it is necessary to submit official fees, a written application and declaration executed by such deleted inventor, declaring that he is not a co-inventor of the patent
According to Article 22, Paragraph 1 of the Patent Act, an applicant may claim a novelty grace period under any of the following con-ditions: (1) a public disclosure made for re-search and experimental purposes ; (2) a dis-play at an exhibition sponsored or recognized by the government , and (3) a disclosure against the will of the applicant . If a grace period of patent novelty is claimed under Item 1 or 2, the applicant should file a patent ap-plication within six months from the occur-rence of the above-mentioned facts, specify-ing the date of the occurrence and submitting evidentiary documents within a specified pe-riod. As to a claim based on an involuntary disclosure under Item 3 above, since the ap-plicant may not have known of the involuntary disclosure made by others, it is not necessary to make a declaration at the time of patent filing.
When claiming priority for a patent applica-tion, the applicant should make the claim at the time of patent filing, specifying the filing date of the corresponding basic application and the country accepting it. The applicant must submit a priority document within four months from the filing date. If he fails to make a priority claim as stated above, or to submit the priority document within the period, the applicant will be deprived of the priority right. Where, within the aforesaid four months, an applicant submits a faxed copy of the priority document, and submits the origi-nal document within the period, his priority claim will still be accepted. In case of an error in the written application, the applicant may submit the evidentiary document to correct the error.
If a priority document is made on a disk in-stead of as a hard copy, the applicant should file such disc and paper texts as printed from the disc. If the electronic files and data ob-tained by an applicant are in non-disk form, he should specify the source of such electronic files and data, and submit paper texts as printed therefrom at the same time. The disc obtained by the applicant should be deemed as an original of the certified document.
Where an applicant fails to submit a certified priority document within the statutory period due to a natural disaster or a cause not attrib-utable to the applicant, he should, within 30 days after the termination of the disaster or cause, file a reinstatement petition together with an explanation and the priority document. If the statutory period has been overdue for more than one year, a reinstatement petition will not be accepted.
Regarding a patent application for a biomaterial-related invention or an invention using biomaterial, the applicant must submit a deposit certificate. Where the concerned biomaterial is obvious to those with ordinary skills in the art, the preceding provisions should not apply. If a biomaterial is deposited with a foreign depository recognized by the IPO prior to patent application and such fact has been declared in the written application, and if the applicant submits the deposit certificate issued by the local depository and documents issued by the foreign depository within three months from the filing date, he may be exempted from the requirement for making a domestic deposit prior to patent filing.
Where no deposit certificate is submitted at the time of patent filing and no supplement is made within the specified time limit, or where no declaration as to the biomaterial-related invention is made, the deposit should be deemed as not made. A notice for supplement should be issued during the procedural examination stage if there is a declaration with incomplete particulars, or a deposit certificate submitted within three months does not meet the requirements. Whether or not a patent should be granted under the above situation will be decided by the examination group.
If the domestic depositor is different from the patent applicant, documents should be submitted to demonstrate that the applicant has been authorized to cite the deposited biomaterials in the patent application and that the deposit complies with relevant regulations.
When filing a request for substantive exami-nation, a patent applicant should submit a vi-ability certificate issued by the depository. If the request is filed by a person other than the applicant, the IPO should inform the applicant to submit a viability certificate within three months. In case of a failure to do so, the sub-stantive examination will be followed.
An application for re-examination should be filed together with reasons within 60 days from the date of receiving a rejection decision. This period is an unchangeable statutory period. Where a supplement of the re-examination application is required, the time limit for such supplement in principle should not exceed six months. That is to say, except where a supplement is not allowed under the Patent Act, the IPO should issue a notice for supplement with a time limit of four months. The applicant may apply for an extension of two months with reasons. If the applicant submits a supplement beyond the time limit but prior to the receipt of a decision by the IPO, the application should still be accepted.
If an applicant fails to state reasons and submit evidence at the time of filing a cancellation action, he should supplement the application within one month; otherwise, his application will not be accepted. However, if the appli-cant can make a supplement prior to the re-ceipt of a decision by the IPO, his application will still be accepted. All supplementary reasons and evidence should also be served on the patentee for defense.
Where a true right holder files a cancellation action against a patentee within two years from the publication of the patent case, and he further files a patent application within 60 days from the date on which the cancellation of the concerned patent has become final, the filing date of the patent application made by the non-right holder should be deemed the filing date of the patent application filed by the true right holder. If the former patentee abandons his patent right after the launch of the cancellation action, the latter should con-tinue to be decided. As to a cancellation ac-tion filed in accordance with Article 34 of the Patent Act, since the time when the cancella-tion becomes final is not easily known, the IPO may still accept a cancellation action for purposes of avoiding any delay to protect the interest of the true right holder. But once the date arrives when the cancellation has become final, the true right holder should inform the IPO.
The period for filing a response to an office action involving a request for supplement or correction or an office action issued during substantive examination and re-reexamination and its extension is prescribed uniformly as follows:
1.Invention and New Design
The period for both Taiwan citizens and foreigners to file a response or make any amendments is 60 days. An extension of 60 days each time may be requested for cause prior to the expiration of the desig-nated period.
2.New Utility Model
The period for both Taiwan citizens and foreigners to file a response or make any amendments is 30 days. An extension of 30 days each time may be requested for cause prior to the expiration of the desig-nated period.