Patent

Failure To Specify Identity of The Applicants At Filing May Result In Loss of The Filing Date

TIPO is contemplating to amend its Patent Examination Guidelines’ Chapter 1, “Procedural Review and Management of Patent Rights” (the Guidelines) and has held two hearings about such an amendment. Among many practical issues to be amended, applicants need to pay special attention to the new requirement that patent applicants’ identity shall be specified on the application form at the time of filing a patent application.

When identity of the applicants is either absent or incomplete at filing, TIPO previously allowed applicants to supplement or identify such omissions by filing an amendment at a later date, but prior to submission of assignment documents. Lacking identity of applicants has never been a fatal defect to nullify a filing date of an application. However, such a relaxed practice will be tightened soon after the amendment of the Guidelines. The logic for the amendment is that a patent application requires an entity to express her intent to file. In the event that no information about applicants is given at filing, the application cannot be sustained due to lacking sufficient intent to file. Furthermore, pursuant to Article 12 of the Patent Act, where two or more persons jointly own a patent application right, the application shall be filed jointly by all joint owners. To serve this purpose, the application shall also disclose information of all joint owners at the time when a joint patent application is filed.

Non-compliance with the full disclosure principle at filing will result in dismissal of the application, or the nullification of the original filing date if the applicants’ information is submitted before the decision on dismissal is made. In either scenario, the consequence may result in inability to claim the priority date and, even worse, harm novelty of the claimed inventions. Therefore, identifying the applicant(s) becomes a requirement to obtain an effective filing date.

According to the proposed amendment, if the documents submitted at filing are sufficient enough to clearly state the identity of the applicant(s), the required information will be deemed to have been specified, although the missing parts must be supplemented within a designated period of time. In this case, the later supplement of the information does not affect the original filing date. Information that is deemed sufficient includes the following:

(1) Identity in a foreign language, still short of its corresponding Chinese translation;
(2) Incomplete identity, still sufficient enough to identify the actual applicant(s); or

(3) Assignment document(s) showing identity of the applicant(s).

When such an amendment will take effect is still yet to be determined. However, we strongly suggest that the full identity of applicants be precisely disclosed at the time when a patent application is filed to avoid complications involved in correcting such after filing.