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According to Article 49 of the Patent Law currently in effect, after an invention patent application is filed, if the applicant plans to effect a voluntary amendment or supplement of his/her patent application, he/she must effect such amendment or supplement within 15 months as of the filing date, or he/she must effect such amendment or supplement at any of the specific timing prescribed in Article 49 of the Patent Law. The Patent Act is under amendment now and, in Article 43 of the draft amendment bill proposed by the IPO, the above-mentioned timing restriction for effecting amendment or supplement has been deleted. However, under the Patent Act currently in effect, patent applicants are obliged to follow the "timing restriction" when effecting voluntary amendment or supplement. To resolve the problems arising from such timing restrictions (prior to the amendment of the Patent Law is passed and implemented), the TIPO decided to ask patent applicants to make amendment or supplement at IPO's initiatives in accordance with Paragraph 1, Article 49 of the Patent Law currently in effect, so that the applicants may effect amendment or supplement as needed. The TIPO held a public hearing on 10 June 2010 to invite and receive comments on their proposal. After considering comments from the general public, the TIPO, on 17 June 2010, announced the "Measures of Handling Patent Amendment and Supplement Based on IPO's Initiatives (hereinafter referred to as "Measures")" that has been taken effect as of 10 June 2010. The content of the "Measures" includes the following:
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After a request for substantive examination or a request for reexamination is filed for an invention patent application, if the patent applicant files a brief expressing its intention to make amendment/supplement to the application, the IPO shall, at its initiative, notify the applicant by phone asking the applicant to submit the amendment/supplement within a specified time period.
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If the patent examiner simultaneously finds that the patent specification and/or drawings is/are in violation of the disclosure requirement set forth in Paragraph 4, Article 26 of the Patent Act, he/she may notify the applicant of such defects by phone.
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The Measures is in nature an administrative measure under Paragraph 1, Article 49 of the Patent Act. Therefore, if a patent applicant does not make amendment/supplement within the time specified by the examiner in a phone notification, the examiner shall not issue a decision directly based on the "inaction by the applicant"; the examiner shall conduct examination of the patent application based on the documents and information available on file.
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When implementing the "Measures", patent examiner(s) shall generate and docket in the file of the patent application concerned a "Record of Phone Notification for Amendment/Supplement." Those people to whom the IPO will send phone notifications include patent applicants, patent agents and employees of applicants or patent agents, but not persons registered with the IPO for service of process for the patent applicants. Unless as needed by a patent applicant or his/her patent agent, the IPO will not provide patent applicants and/or agents with copies of the "Record of Phone Notification for Amendment/Supplement." Should a patent applicant or his/her patent agent requests such "Record of Phone Notification for Amendment/Supplement", the IPO shall furnish the same by fax.
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After being notified by phone, a patent applicant may submit amendment/supplement consistent or inconsistent with that stated in the "Record of Phone Notification for Amendment/Supplement", or merely file a response without amendment/supplement. In either situation, the IPO shall deem the said amendment/supplement/response as document submitted in accordance with Paragraph 1, Article 49 of the Patent Act, and the patent examiner shall proceed with examination of the patent application based on the amendment/supplement/response thus filed.
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Implementation of the "Measures" will provide patent applicants with more flexible opportunities for effecting patent amendment/supplement, which is of significant meaning to patent practitioners.
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