Revisions to the Substantive Examination Guidelines for Patents in 2021 – Commentary

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introduction
Part II, Chapter 1 – description, claims, abstract and drawings
Part II, Chapter 2 – definition of “invention”
Part II, Chapter 5 – restrictions on grace periods and methods of disclosure
Part II, Chapter 6 – restrictions on the circumstances allowed for changes to the disclaimer
Part II, Chapter 10 – division and conversion
Part II, Chapter 13 – inventions related to pharmaceutical products
Part V, Chapter 1 – new section on hearings

introduction

The Taiwan Intellectual Property Office (TIPO) recently revised the Guidelines for Substantive Patent Examination in order to respond quickly to the needs of patent examination practices and improve the quality of examination. patents. The revisions came into effect on July 14, 2021 and include changes to:

  • Chapter 1-6, 10, 11, 13 and 14 of Part II (Substantive Examination for Patents for Invention);
  • Chapter 1 and Chapter 5 of Part III (Substantive Examination for Design Patents);
  • Chapter 3 of Part IV (Formal examination for utility model patents); and
  • Chapter 1 of Part V (Invalidity proceedings).

This article provides an overview of the revisions.(1)

Part II, Chapter 1 – description, claims, abstract and drawings

The recently revised guidelines provide additional guidance on reviewing how a claim is disclosed, as follows (subsection 2 (6)):

  • An independent claim should indicate the designation of the object claimed, which should not be too general or brief. When the subject is designated simply by expressions such as “an article”, “a device” or “a method”, it is classified as not designated.
  • When an independent claim to an invention is presented in a two part form, it should contain expressions such as “characterized thereby”, “wherein the improvement comprises” or other similar expressions, while a dependent claim does not need to do this.
  • Referencing a corresponding reference sign in a drawing – where the technical feature of a claim is followed by the reference sign in parentheses – will not blur the claim.

Part II, Chapter 2 – definition of “invention”

The recently revised guidelines explicitly state that although a mathematical method does not meet the definition of an invention, an invention which uses a mathematical method to optimize the distribution of the workload on a computer network should not be considered. as incompatible with the definition of an invention simply because it involves a mathematical method (Article 1 (3) (4)). In addition, the recently revised guidelines expressly specify the legal exclusion of diagnostic methods for the treatment of humans or animals, as prescribed in Section 24 of the Patent Act, including all steps since obtaining data until diagnosis (Article 2 (3) (1)).

Part II, Chapter 5 – restrictions on grace periods and methods of disclosure

The grace period for invention and utility model patent applications was extended from six months before the filing date of a patent application to 12 months when the Patent Act and the Rules of application of the Patent Act were amended in 2017. In addition, restrictions on the methods of disclosure that may allow requesting a grace period were removed. In addition to this, an amendment has been made so that a disclosure made against the will of an applicant cannot be regarded as a circumstance which would prevent the grant of an invention patent or a design patent. ‘usefulness. However, this does not apply to intentional publications relating to a patent application in a gazette in Taiwan or a foreign country.

As the amendment to the previous legal articles was adopted during the revisions of Part II, Chapter 3, in 2017, Chapter 5 of Part II has now been revised to provide for the extension of the grace period and the relaxation methods of disclosure. .

Part II, Chapter 6 – restrictions on the circumstances allowed for changes to the disclaimer

Since the review of disclaimer changes during post-grant examination or prosecution has historically been less strict in Taiwan’s examination practices, the TIPO expressly limited in the 2021 revisions the circumstances under which modification of the disclaimer during examination or prosecution after issuance is permitted. Such restrictions were made to prevent the misuse of the disclaimer amendments during examination or prosecution after grant by applicants or patentees. Now changes can only be made when the change in the disclaimer during post-grant review or prosecution is made for:

  • compensate for the lack of novelty indicated by the cited references;
  • compensate for the lack of fictitious novelty indicated by the cited references;
  • overcome failure to comply with the first-to-file principle indicated by the cited references. However, references cited with the same filing date are not eligible for such modifications; and
  • exclude a subject from statutory exclusion (for example, a “human part” disclaimer in object claims or a disclaimer of “step (s) applied to a human or animal body alive “in the claims on means).

Part II, Chapter 6 also requires that the following conditions be met if a modification of the maximum and minimum values ​​in the claims is to be made:

  • The modified maximum and minimum values ​​have already been disclosed in the description, claims or drawings submitted for the patent application.
  • The modified range of values ​​has been included in the range of values ​​disclosed in the description, claims or drawings submitted for the patent application. Two other embodiments are included in this amendment for clarity.

Part II, Chapter 10 – division and conversion

The newly revised guidelines explicitly state that when an applicant who made statements regarding his earlier patent application for an invention and utility model for the same creation on the same date and subsequently requested the division of that patent application for an invention – while claiming that the divisional patent application is a correct continuation of the utility model patent – the divisional patent application is allowed to cite the earlier statement regarding the patent application for the invention, and is limited to a divisional patent application. However, the applicant must make a statement of the citation when filing the divisional patent application. Making a further statement of the citation afterwards is not allowed (Article 1 (3)).

Part II, Chapter 13 – inventions related to pharmaceutical products

The recently revised guidelines explicitly state that what differentiates the subject matter of a selection invention from the prior art is that a selection invention claims individual elements, subgroups or sub-ranges which do not. are not explicitly mentioned in a larger group or range known from the prior art. Namely, the statement that selection should be targeted has been removed from the guidelines (subsection 5 (3) (1) (5)).

Part V, Chapter 1 – new section on hearings

Previously, patent invalidation actions in Taiwan were reviewed on the basis of written documents or evidence submitted. In order to allow parties to fully express their opinions when examining patent invalidation cases and to simplify procedures for subsequent administrative appeals, the TIPO published on March 30, 2018 the Program for the Hearing of Patent Cases. patent invalidation to be implemented. the program on August 5, 2019 and February 8, 2021. The addition of a new article 3 (3) (2) on hearings in the new guidelines aims to expressly stipulate that the provisions of the program must be observed when holding hearings.

Part V, Chapter 1 also modifies the principles regarding the intent of the court’s judgment in invalidation cases which require reconsideration by the TIPO where the original provisions have been revoked due to new grounds or new evidence which is not applicable. appeared only during the administrative appeal procedure. of which :

  • If the judgment which revoked the original decision of a patent invalidation case does not require the performance of an obligation by the specific patent agency, the patent invalidation case will revert to a state where a decision has not yet been rendered. As to new grounds or new evidence which were not raised by the invalidation applicant during the invalidation procedure up to the administrative appeal procedure, there is no need to notify the parties to provide their answers because they have sufficiently argued during the administrative litigation procedure.
  • If the intention of the court judgment on revoking the original decision of an invalidation case is simply to order the specific patent agency to reconsider the invalidation case in accordance with the court judgment notices , the specific patent agency will do so. Matters not covered by the court judgment notices do not normally require further investigation. However, if the intention of the court judgment indicates that there is still relevant evidence to be clarified or that further investigation is required, the specific patent agency may, if it deems it necessary, notify the applicant to ‘invalidation of submitting comments or the patentee to provide a response or additional response within a specified time. In the event of a late submission of a comment or response, the relevant patent agency may take a decision.

For more information on this topic, please contact Jason chuang Where Elina yu at Lee and Li Avocats by phone (+886 2 2763 8000) or by e-mail ([email protected] Where [email protected]). Lee and Li’s website can be accessed at www.leeandli.com.

End Notes

(1) For more details on the new revised guidelines, please refer to the underlined edition of each revised chapter posted on the TIPO website.

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