TIPS^®  Taiwan Intellectual Property Special

Announcement of Patent Examination Guidelines, Chapters 5 through 8

Chapters 5 through 8 of the newly formulated Patent Examination Guidelines
were announced by the Taiwan Intellectual Property Office (IPO) on December 15,2004 and became effective on the same day. The contents of these Chapters include examination guidelines with respect to priority claims (Chapter 5), supplements,amendments and corrections of specification and drawings (Chapter 6), special patent applications, such as divisional and conversion applications (Chapter 7) and patent term extension (Chapter 8).

One issue worthy of discussion in the newly formulated Guidelines includes that strict limitations are now applied to corrections of granted patent claims. For example, addition of a sub-component to the original claim will be considered “making substantive changes to patent claims” if the sub-component was not defined in any dependent claims but only described in the patent specification. In addition,reduction of the range of values in the original claim will be considered “making substantive changes to patent claims” if the reduced range was not defined in any dependent claims but only described in the patent specification. Accordingly, such corrections of granted patent claims will be rejected under Article 64, Paragraph 2 of the Patent Law.