Patent

New Measure For Voluntary Amendment Available Upon TIPO Telephone Notification

In the Draft Amendment to the Patent Act, the current 15-month statutory period for voluntary amendments has been removed. However, before the promulgation of the Amendment and to facilitate voluntary amendments before approval for grant of an application, the TIPO is launching a transition measure to accept voluntary amendments from applicants who have expressed such a need in written form. The examiners, based on the written requests, will notify the applicants by telephone for the formal submission of such amendments within a designed period. However, the new measure still does not allow voluntary amendments after a Notice of Allowance has been issued by the TIPO.

According to the measure, a petition expressing intention for voluntary amendments requires no additional fee and can only be filed for any pending patent application for which the request for examination has been made. Such petition serves to notify the examiner that the applicant intends to effect amendments for cases where all formality examination has been completed. The TIPO examiner is required by the new measure to notify the applicant by telephone within one to two months to designate a period during which the voluntary amendments can be effected. The examiner's telephone notification to the applicant's patent attorney is the sole basis for such submission. The applicant must effect the intended voluntary amendments within the period designated by the examiner; voluntary amendments submitted beyond the designated period will not be entered at all, or a further petition will be needed for doing so.

Under the new measure, when the examiner contacts the applicant’s patent attorney by telephone, it is not an indication that the examiner has acted on the case, neither is the examiner required to examine merits of the patent application before making the telephone call. Furthermore, once the voluntary amendments are submitted, the examiner is not required to act on the case immediately. The examiner cannot refuse the voluntary amendments, and the examiner will proceed with the examination based on the amendments. The amendments, of course, shall still comply with the relevant provisions, such as no introduction of new matter and support by the original disclosure. Otherwise, they shall not be entered upon being examined by the examiner with regard to their merits.