Newsletter
PATENT PROCEDURAL EXAMI-NATION GUIDELINES AMENDED
In October 2006, the Intellectual Property Office (IPO) announced amendments to the Patent Procedural Examination Guidelines, which are outlined below:
Simplified procedural examination of signa-tures and seals
Applications for recordation of assignment, rec-ordation of entrustment, early laying-open, withdrawal, abandonment, or file history review (for pending applications, applications not yet granted, opposition actions, or cancellation ac-tions), are important matters that greatly affect the interests of rights holders. Accordingly, the signature or seal of the rights holder on such ap-plications must be identical with that held on record by the IPO. If it is not identical with the signature or seal on record, the IPO will instruct the applicant to provide a signature or a seal impression that is consistent with that on record, or make an application to change the signature or seal, or provide an affidavit in lieu of an appli-cation to change the signature or seal. For other types of patent-related application, no examina-tion will be made as to whether the signature or seal is identical with that on record.
Simplified procedural examination of eviden-tiary documents in cancellation actions
At the procedural examination stage of a can-cellation action, the cancellation petitioner will not be required to produce originals of eviden-tiary documents, or to prove or declare that photocopies are identical to the originals. If the evidentiary document is in a foreign language, the IPO will not require the cancellation peti-tioner to submit a full or partial Chinese transla-tion, unless so requested by the patentee.
Conditions affecting filing date
The filing date of an invention, utility model, or design patent application is the date on which the application, specification, and drawings are presented in full. For an invention patent appli-cation, the applicant must present an application document, an invention patent specification, and necessary drawings; for a utility model patent application, the applicant must present an ap-plication document, a utility model patent speci-fication, and drawings; and for a design patent application, the applicant must present an ap-plication document and a specification and drawings. The content of the patent specification for an invention patent or a utility model patent must include the invention or utility model specification and patent claims, while the speci-fication and drawings for a new design patent must include drawings.
Clarification of legal effect of missing pages or drawings
Article 21 of the Patent Act Enforcement Rules provides that if pages of a patent specification, or drawings, are missing from an application, the date on which the missing pages or drawings are presented should be the filing date. The Guide-lines explain that the above provision refers to a situation in which pages are missing from an invention or utility model specification such that the specification as presented entirely fails to disclose the patent specification or claims; or drawings are missing from an invention patent or utility model application such that necessary drawings are entirely absent, or such that a utility model application is entirely devoid of drawings; or drawings are missing from a design patent application such that the specification and drawings are entirely devoid of drawings.
Conditions affecting filing date based on for-eign-language documents
If pages or drawings are missing from for-eign-language documents, but not to a material extent as described in IV above, it is only nec-essary to present the foreign-language docu-ments in their complete form to obtain the date on which the foreign-language documents were first submitted as the filing date.
Procedures on death of patent agent
On the death of a patent agent, the applicant must inform the IPO of the patent agent's death, and appoint another patent agent or itself take over the handling of the application. If the applicant fails to inform the IPO and the IPO becomes aware of the situation, the IPO will take the fol-lowing action:
1.Taiwanese applicants: The IPO will request that the applicant appoint another patent agent or itself take over the handling of the application.
2.Foreign applicants: Because the IPO does not normally serve documents overseas, it will instruct the patent agent's office to request the applicant to appoint a new patent agent within three months. If the IPO receives no response within three months it will serve notice directly on the overseas applicant, requesting the applicant to duly appoint a patent agent.
Relaxation of procedural examination of matters requiring declaration
In the case of a declaration to assert a novelty grace periods, international priority, domestic priority, or the deposition of biological materials, it is only necessary that at the time of filing of the patent application, there is objectively sufficient evidence to support that the applicant intended to assert such a matter, for the applicant to be deemed to have made such a declaration. If the applicant's intent is unclear, the IPO will instruct the applicant by letter to provide a further statement. If the facts asserted or matters re-quired to be stated in support of the assertion are incomplete, these may be provided after the fil-ing date. However, the declaration itself must be made at the time of filing; it may not be made at a later date.
Relaxation of procedural examination of drafting method for drawings
If drawings are unclear, or photographs rather than drawings are presented in support of a util-ity model application, at the procedural exami-nation stage the IPO will instruct the applicant to present drawings complying with the rules. If the applicant fails to provide such drawings by the deadline given, the application will be re-jected. In the case of an invention patent appli-cation, it is for the applicant to decide whether drawings are necessary. Whether or not failure to submit drawings will affect patentability will be determined at the substantive examination stage.
Unincorporated bodies may file cancellation actions
An unincorporated body that has a representative or manager may file a cancellation petition. However, in the case of a sole proprietorship, it is not an unincorporated body, and a cancellation action may only be filed in the name of the pro-prietor.
Patent management
A new Chapter 12 has been added containing guidelines on the acquisition, maintenance, and extinguishment of patent rights, and on matters for recordation.