TIPS^®  Taiwan Intellectual Property Special

China Updates

Determination of the Identicalness of Invention-Creations

The new Patent Examination Guidelines clarify the definition and principles of determination for “identical invention-creations.” When determining the identicalness of two applications, only the claims are compared. For two applications to be determined as “identical” the claims being compared must be “exactly the same,” but the compatibility of the concept of upper and lower (specific and generic) terms and numerical range, and the overlapping of the claims that have the same scope of protection, are excluded. In short, only if the scope of protection of a claim in one application or patent is identical with that of a claim in another application or patent, the two applications or patents will be deemed as identical invention-creations. For example, even though the contents of the specifications of two applications or patents are the same, they may have different claims with one claiming the product and the other claiming the process. In such case, the two applications or patents will not be deemed identical. Moreover, if the claims of two invention-creations partially overlap with each other, they will not be deemed identical. For example, if the continuous numerical range in one claim is not completely the same as that in the claim of another application, the two applications will not be regarded as identical invention-creations.