Announcement of Taiwan Intellectual Property Office’s Draft Amendment to the Patent Examination Guidelines
On May 31, 2024, the Taiwan Intellectual Property Office (TIPO) announced a draft amendment to Parts II and V of the Patent Examination Guidelines. The changes are proposed and made in line with the revision of relevant laws and regulations to timely respond to the calls for consistency and optimized quality of patent examination in practice. In addition to text modification, additional principles and examples in conducting examination are incorporated to enhance the practicality of the Patent Examination Guidelines. The key points of the draft amendment are summarized hereunder.
1. Part II, Chapter 1: “Specification, Claims, Abstract and Drawings”
Section 1.3.1 “The Enablement Requirement” in this chapter is to be amended to state that the sequence listing may be submitted in the electronic version thereof in compliance with the requirement of the TIPO. This amendment is made based on the content of Rule 17.VII of the Enforcement Rules of the Patent Act.
2. Part II, Chapter 3: “Patentability”
Section 2.6.4 “Criteria for Determination of Lack of Novelty based on Legal Fiction” in this chapter is to be amended. An example is introduced in this section to specifically explain how to determine whether a patent application lacks novelty based on legal fiction.
3. Part II, Chapter 11: “Patent Term Extension”
Section 4.4.3 “Period of inaction attributable to the applicant” in this chapter is to be amended to explain the way the TIPO will determine the date of delivery of the notification letter of the certificate if the proof of delivery of the notification letter is lost and the actual date of delivery of the notification letter thus cannot be ascertained.
4. Part II, Chapter 14: “Inventions Related to Biology”
Section 4.1 “Requirements for Written Description” and Section 4.3 “Sequence Listings” in this chapter are amended based on the content of Rule 17.VII of the Enforcement Rules of the Patent Act and WIPO Standard ST.26 that has been implemented by the TIPO.
Section 4.3.2 “Submission of Sequence Listings” in this chapter is to be amended to state that if a patent application is filed electronically, the sequence listing submitted should be an electronic file in XML format that complies with WIPO Standard ST.26. If a patent application is filed in writing, a paper sequence listing that complies with WIPO Standard ST.26 or an electronic file in XML format that complies with WIPO Standard ST.26 may be submitted.
5. Part V, Chapter 1: “Invalidation of Patent Rights”
Section 2.1.2 “the Interested Party” in this chapter is to be amended to specify the definition of the interested party and describe that a reasonable investigation and a formality examination should be conducted when determining whether the interested party is eligible.
Moreover, Article 17 of the previous Intellectual Property Case Adjudication Act was changed to Article 44, with its provisions being revised to delete the regulation requiring the TIPO to intervene in the action and to include a new regulation for seeking the advice of the TIPO on relevant matters. Hence, the relevant content in Section 9 “the Relationship Between an Invalidation Action and a Patent Infringement Litigation Case” in this chapter has been revised accordingly.
6. In addition, the Patent Examination Guidelines are to be amended to revise wordings based on the revision of relevant laws and regulations and correct errors.
(Translated and summarized from the Hot News announced on the website of the TIPO)
