Accompanying with the amendment to the Patent Act in 2019, Taiwan Intellectual Property Office (TIPO) has amended the Patent Examination Guidelines which entered into effect on November 1, 2019. At the same time, China Intellectual Property Administration also released an amendment to the Guidelines for Patent Examination which entered into effect on November 1, 2019. This article will provide a synopsis of the said amendments.
 
♦The Amendment to the Patent Act and the Corresponding Patent Examination Guidelines in Taiwan
 
I. Expending the applicable scope and time limit for divisional applications
 
1. Change on the time limit for filing a divisional application after the parent application has been approved
 
Before the amendment, once an approval decision of an invention patent was rendered, a divisional application divided from this application could be only file within 30 days after the decision was served; if an application was going through the re-examination stage, a divisional application could be only filed before a decision was made. For utility models, once an approval decision was served, it was impossible to file a divisional application.
 
To suit the needs of businesses and industries, after the amendment, for both invention patents and utility models, the time limit for filing a divisional application has been extended to three months after an approval decision is served, the same as the period for paying certificate fees for patent granting. The applicant will hence have sufficient time for consideration.
 
2. Restriction on filing divisional applications after the original application has been approved
 
Before the amendment, in accordance with the Patent Act, for both invention patents and utility models, the divisional application shall not go beyond the scope of the original (parent) application, and the original application shall be published with the claims and drawings at the time when the approval decision was made. After the amendment, in addition to the original requirements, two additional limitations (which were originally provided in the Enforcement Rules of the Patent Act) have been added to Art. 34 of the Patent Act, which is to add that the claims “shall not be the same as that have been approved in the original patent application”, and “the description, claim(s), or drawing(s) of the original patent application that have been approved may not be altered and shall be published based on the claim(s) and drawing(s) as originally approved”, to make the article more definite.
 
II. Enhance the examination efficiency for invalidation proceedings
 
Before the amendment, although there was a time limitation of one month for an invalidation petitioner to submit evidences after filing the petition for invalidation, but any evidences had been submitted before a decision was rendered shall still be examined by the examiner, and it could cause delay to the proceedings. After the amendment, the time limitation for late-submission of evidences has been extended to three months, but at the same time any evidences submitted beyond this time limit will not be taken into consideration, in order to enhance the examination efficiency.
 
Similarly, before the amendment, there were no specific limitation on when the patentee can file a post-grant patent amendment. Therefore, the patentee could file such amendment at any time during invalidation proceedings, which also delayed the proceedings. After the amendment, the time limit for the patentee to file an amendment is one month after receiving a notice to respond (to the invalidation petition), which can only be extended up to one month. But the above limitation shall not apply if a litigation case involving an invention patent is pending.
 
Furthermore, before the amendment, there were no limit on how many times the invalidation petitioner or the patentee could file an supplementary comment or response, hence the proceedings usually would be largely extended as long as both parties continuously filing new comments or responses; the Patent Act before the amendment only indicated that TIPO may directly proceed to examination if the acts of both parties were likely to delay the proceedings. Therefore, in order to make the examination schedule clearer, after the law amendment, TIPO will only notify the invalidation petitioner for filing a comment or the patentee for filing a response when it is necessary, and the time limit for both parties to answer is one month after receiving such notice (can be extended up to one month); anything submitted not within the time limit will not be taken into consideration.
 
III. Amendments to time limitation on post-grant amendments of utility models and the procedure of examination
 
As to the examination procedures for amendments filed after a utility model is granted (a post-grant amendment), before the Patent Act was amended, substantive examination would be applied only when a petition for invalidation against such utility model is pending, and in any other cases the formality examination would be applied; which means, different examination standards could be applied to post-grant amendments. Furthermore, if said post-grant amendment had to gone through the formality examination, it would be impossible to add technical features in the description into claims by a post-grant amendment, which accordingly had raised the barrier of post-grant amendments.
 
Hence, after the Patent Act was amended, all kinds of post-grant amendment on utility models shall go through the substantive examination, whether or not if there are invalidation proceedings pending.
   
For the limitation on when a post-grant amendment can be filed, there were no particular restriction before the Patent Act was amended.
 
After the law amendment, besides the situation that there is a pending invalidation proceedings, the utility model patentee can only file an application for post-grant amendment when (1) there is a pending request for technical evaluation report of the utility model; it is because issuing technical evaluation reports involves examination on a certain substantive requirements, and therefore it is necessary to confer the patentee right to amend the utility model; or (2) there is a pending litigation case involving the utility model patent; it is to provide the patentee a chance to amend the utility model when necessary during the defense in litigation.
 
Furthermore, in the situation that when a post-grant amendment is made when there is a pending invalidation proceedings, if a patentee wishes to file such amendment, the patentee can only file it after receiving the notice to response (either for a primary response, an supplementary response or to a refusal for post-grant amendment) from TIPO, and should file it within one month after receiving the notice. Unless a time extension is allowed, a post-grant amendment filed beyond the said time limit will not be admissible. But this limitation does not applies to amendments filed when a litigation case involving the utility model patent is pending. On the other hand, during invalidation proceedings, if the patentee files a post-grant amendment on the grounds that a request for technical evaluation report is pending, the patentee can still only file an application for amendment within the three kinds of specific time periods as mentioned above.
 
Amendments to the Guidelines for Patent Examination in China
 
I. Time limit and applicants of a secondary divisional application
 
Before the amendment on Guidelines, the time limit to file a secondary divisional application (divided from an earlier divisional application) was in principle based on the original parent application, which is 2 months from receiving a notice of allowance or 3 months from receiving a notice of rejection of the parent application. However, if the examiner has indicated that a divisional application still lacks unity of invention and required a secondary division, and the applicant has provided such examination opinion or an official notice requiring division together with filing the secondary divisional application, the aforementioned time limit are not applicable. The problem was that this proviso (division required by examiner) did not expressly indicate a time limit for filing the secondary division, but just indicated that it should not be subject to the parent application; hence, in order to clarify the time limit, after the amendment, the time limit for filing a secondary divisional application is subject to the divisional application it bases on.
 
Besides, before the amendment, there were no specific requirements on the applicants and the inventors of a secondary divisional application. In practices, rules for primary divisional applications were applied by analogy, e.g. the applicant should be the same as the parent application. After the amendment, it is expressly provided that the applicant of the secondary amendment should be the same as the divisional application it based on, and the inventors should be same or a part of the inventors of the based application, which remains the same as in the examination practices before the amendment.
 
II. Design patents of Graphic User Interfaces (GUI)
 
Before this amendment, there were no specifically detailed requirements for GUI designs, e.g. for the name of GUI designs or drawings to be submitted, etc. After the amendment, the Guidelines requires that the name of design should include the article to which the GUI applies, e.g. “A GUI for mobile phones”, “a refrigerator containing a GUI”, etc., but the design shall not be loosely named as “A GUI”.
 
Besides, after the amendment, for the designs in which the important design element is only the portion of GUI, the Guidelines requires that at least one orthographic view showing a monitor displaying the GUI should be submitted. For animated GUIs, the set of drawings showing the GUI shall be able to define the unique complete animation sequence.
 
III. Strengthening the burden of proof on the examiner
 
Before the amendment, when an examiner thought a technical feature (TF) is a common general knowledge, if the applicant challenged such opinion, the examiner shall provide reasoning “or” provide evidences. Because providing evidences was not a compulsory requirement, in practices examiners could reject the challenge with no evidences.
 
After the amendment, if the examiner thinks a special technical feature (STF) is a common general knowledge, and if the applicant challenges it, the examiner shall provide evidences and reasoning. if the examiner thinks a technical feature (TF) is a common general knowledge, it is the same as before the amendment.
 
IV. Loosening the restriction on telephone interviews
 
In the past, during the examination procedure, if an applicant wished to discuss the application with the examiner, in a telephone interview they could only discusses formality issues. After the amendment, the applicant can have a telephone interview on the technologies in the application or prior arts, or on issues within the application documents. The applicant can also discuss with examiner through other channels, such as video conferences or emails.
 
V. Prioritized examination and deferred examination
 
As to the prioritized examination, in the past it was provided in “Regulations for Prioritized Examination of Patents”, which provides that for invention patents, the examination shall be finished within one year from the date that the request for prioritized examination is approved; for utility models and designs, the examination shall be finished within two months from the date that the request is approved. After the amendment, rules for the prioritized examination is also included in the Guidelines, and an additional limitation was added, that if an applicant file one invention patent application and one utility model application for the same invention on the same day, the prioritized examination will not be applicable to this invention patent application.
 
Before the amendment, there were no regulations for deferred examination; it was added into the Guidelines after the amendment. For invention patents, a request for deferred examination can be filed together with requesting the substantive examination; for designs, it can be filed when filing the application. The allowed time period to defer is one, two or three years from the date a request for deferred examination becomes effective.
 
IV. Regarding when should an examiner ends the prior art search
 
Regarding when should an examiner ends the prior art search during the examination, before the amendment, it was only provided that when an examiner considered continuing the search will cause additional time and cost disproportionate to the expected results, they could decide to end the search. After the amendment, further clearer rules were provided, that if examiners decides to end the search due to no relevant prior arts are found, they should at least have already searched the patent databases in China, databases of patents in English, databases of patent abstracts in foreign languages, and the database of periodicals in Chinese. Regarding the search report, before the amendment it is only required the examiner to indicate the technical documents of prior arts, scope of search and key words, etc., which did not include the search query; after the amendment, a search report shall provide the search records and the principal query used which lead to the closest prior art.