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The Regulations Governing Patent File History Review was promulgated and announced on 11 December 1994, which went through two amendments made in October 2000 and June 2004 respectively.
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Since patent case files belong to the government's information as prescribed in Article 3 of the Act Governing Publication of Government's Information, provision and public use of patent case files shall follow the Act Governing Publication of Government's Information and the Act of Docket Files.
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According to Article 6 of the Act Governing Publication of Government's Information and Article 18 of the Act of Docket Files, the government's information and files shall, upon request by people, be supplied for review, transcript or reproduction (hereinafter jointly referred to "file review"). However, the Regulations Governing Patent File History Review currently in effect only set forth file review guidelines for partial patent case files, and it provides for limitations on reviewing files for opposition cases and cancellation cases. To meet the legislative intent as stated above (i.e., case files shall be, in principle, allowed for public access, and limitation on access to files is only exceptional), and to provide more concrete guidelines on handling patent file review matters, the Intellectual Property Office (IPO) is in the process of amending the Regulations Governing Patent File History Review. The major points of the amendment are as follows:
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The legal basis for promulgating the Regulations Governing Patent File History Review shall be expanded to include Patent Act, Act of Docket Files, the Act Governing Publication of government's Information and the Law of Administrative Procedure.(Article 1)
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For (1) laid open or published patent applications,(2) opposition cases, cancellation cases, correction cases, patent term extension cases, cancellation actions against patent term grant, for which decisions have been made, as well as (3) utility model patent technical reports which have been issued, any person may apply for reviewing files of the above-mentioned cases. (Article 2)
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For any patent application that has not been laid open or published, regardless whether the examination is pending or concluded, only the concerned parties may apply for reviewing the files of the above-mentioned cases (Article 3)
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For cancellation cases, correction cases, patent term extension applications, compulsory licensing cases, applications for utility model patent technical reports, which are under examination, only the concerned parties or interested parties may apply for reviewing the files of the above-mentioned cases (Article 4)
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Assessors who are appointed by courts or engaged by concerned parties or interested parties shall apply for reviewing files (Article 5) Where document in a patent case file were originally provided by the party seeking a review of the file of the patent case, the requested review of the documents provided shall be allowed (Article 6)
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The amendment shall set forth the situations under which review of patent case files are not allowed. (Article 7)
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The amendment shall set forth matters related to handling of requests for file review and special requirements (Articles 8 through 11)
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Where patent case files are kept electronically, review of the said files shall be done based on electronic copies or reproductions of the files.(Article 12)
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We will monitor the development of the amendment and timely report it for reference by our readers.
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