|
On June 10 and June 18, 2010, the Intellectual Property Office (TIPO) held public hearings to receiving comments on proposed changes to Section I of the Substantive Examination Guidelines for Patents, which addresses procedural examination and patent management (the "Guidelines").
|
| |
|
The procedural examination of patent applications is a preliminary procedure that involves verifying whether the content and format of submitted patent applications are in compliance with the Patent Act and the Enforcement Rules of the Patent Act. The current Guidelines were first promulgated on May 20, 2005, and last amended on September 25, 2006. The contents of the current proposed changes are:
|
| |
|
l |
Determining the Application Date
|
| |
|
The amended Guidelines will explain the legal significance of the application date and determine the application date based on the timing of the applicant's complete disclosure of the invention and filing of the application with the proper patent authorities.
|
| |
|
l |
Incomplete Specifications or Drawings
|
| |
|
The Guidelines will be amended to change the current method for handling incomplete specifications or drawings (pursuant to Article 21 of the Enforcement Rules of the Patent Act). In making this amendment, TIPO will consider the common practices in other jurisdictions.
|
| |
|
l |
Specifications in Foreign Languages
|
| |
|
The amended Guidelines will define the nature of specifications that are written in foreign languages, and will provide standards for such specifications, taking into account the common practices in other jurisdictions.
|
| |
|
l |
Identity of the Applicant
|
| |
|
Because a patent application cannot be effective without a principal, the amended Guidelines will require that patent applications identify the applicant, and that such disclosure will also be a factor in determining the proper application date.
|
| |
|
l |
Although Article 25, Paragraph 3 of the Patent Act calls for the submission of "necessary drawings" along with a patent application, the amended Guidelines will clarify that if the application can fully disclose the invention without the aid of drawings, no drawings need to be attached. Because the current Guidelines do not distinguish between "necessary" and "unnecessary" drawings, all drawings that are attached will be considered "necessary drawings."
|
| |
|
l |
Designation of Representative Figures
|
| |
|
The reason for using representative figures is to increase the efficiency of patent searches by allowing users to quickly browse through the patent filings. To help the patent system better serve its purposes of promoting innovation, the amended Guidelines will consider the common practices in other jurisdictions and adopt the best methods for the efficient use of representative figures.
|
| |
|
l |
Refund of Patent Application Fees
|
| |
|
To correspond with Article 2-1 of the Regulations of Patent Fees, recently amended on January 1, 2010, the amended Guidelines will provide that should the patent applicant withdraw his application before the first notice is issued, he may request a refund on the substantive examination fee or reexamination fee. To further correspond with Article 2, Paragraph 2 of the Regulations of Patent Fees, the amended Guidelines will provide that if an applicant of an invention patent application, request for division, or request for conversion of an application into an invention application, filed after January 1, 2010, makes a request to delete certain claims in his application before the first notice is issued, then the fees for the first substantive examination shall be partially refundable. Such refund shall be based on the number of claims to be deleted, provided that there shall be no further refunds after the number of claims in the application is reduced to ten.
|
| |
|
l |
Amending Prior Patent Applications
|
| |
|
In accordance with a Taipei Superior Administrative Court decision in 2006 (95-Su-1539), the amended Guidelines will provide that a prior patent application that establishes priority rights shall be considered to be in suspended examination at any time prior to been withdrawn. Therefore, to protect applicants' priority rights, applicants may file for division or amendments to their applications, so long as such requests do not negatively impact the legality of the prior patent applications.
|
| |
|
l |
Contents of Specifications
|
| |
|
In accordance with Article 15 of the Enforcement Rules of the Patent Act, which was last amended on August 19, 2008, the amended Guidelines will make adjustments to the content required in a patent specification.
|
| |
|
l |
Registering the Transfer of Associated Designs
|
| |
|
Because "associated designs" are derived from an original design, when an applicant registers to transfer the patent rights or rights to apply for a patent in a design, he should simultaneously register a transfer of the rights in the associated designs. In such cases, the amended Guidelines will expressly exempt the registration fees for transferring the rights in associated designs.
|
| |
|
Lee and Li will continue to keep track of these developing changes and will update the readers accordingly.
|
| |
