Patent

TIPO Launched Newly Amended Patent Examination Guidelines For Determining Filing Date

TIPO launched newly amended Guidelines for Patent Examination on September 7, 2010. Among the various revisions, the amendment tightens up criteria for obtaining an official filing date for applications that omit parts of specifications at their initial filing, but later submit a correction.

Article 25-3 of the Patent Act stipulates that, “the filing date of the invention patent application shall be the day which the application, the specification and necessary drawings are fully submitted.” In the event of any shortage of documentation or omission in description or drawings, according to Article 21 of Enforcement Rules of the Patent Act, “the correction date will be regarded as the filing date.” The old Guidelines generously limited the circumstances where the correction date would be regarded as the filing date to the situations where (1) the shortage of supporting documentation in descriptions/necessary drawings of invention/utility model patent resulted in a complete omission of description or claim on the patented scope, or an entire omission of necessary drawings; and (2) the shortage of supporting pages resulted in no drawings at all for a new design patent application. As such, in the event the shortage of supporting pages was not as serious as a complete omission of claims, descriptions or drawings, and that the correction did not involve new matters, the TIPO generally would not alter the original filing date upon receipt of the correction or submission of the omitted parts from the applicant.

A filing date of a patent application is essential to patentability in terms of the findings of prior art or a full disclosure of substantive technology for patents. Partial omission or shortage of an “invention description” may ultimately affect the obtaining of an official filing date if the later correction is deemed an introduction of new matter. However, owing to the serious patent backlog, the TIPO does not have ample manpower to further examine the correction that is submitted during the formality examination stage. To avoid further time lapse in the TIPO for determining whether the original filing date shall be retained or a new filing date shall be given after receiving a correction of supporting pages from the applicant, the new practice no longer gives sympathy to applicants who fail to submit specification in full at the time of filing the application. The new Guidelines reflect that all corrections made before confirmation of an official filing date, regardless of voluntary corrections or corrections made on the TIPO’s request, will result in a new filing date, unless the correction is contained within the prior application to which priority date has been claimed. This rule also applies to applications filed in a foreign language.

In response to this tightened rule and to avoid the lapse of the original filing date (which may possibly result in the lapse of a priority date), we recommend our clients effect voluntary amendments only after confirmation of an official filing date in cases where omissions are found at filing. By doing so, it will allow the examiners to determine whether such voluntary amendments result in introduction of new matter based on the context of the original disclosure. Furthermore, such voluntary amendments may be withdrawn without risking the filing date if the examiners deem such corrections an introduction of new matters. Needless to say, if it is evident that such omissions will result in defects in disclosure or enablement requirements, the omissions should be supplemented immediately, even if such supplement will result in the lapse of a priority date.