TIPS^®  Taiwan Intellectual Property Special

Public Hearing on Examination Guidelines for Patent-of-Addition

The draft of patent-of-addition examination guidelines is now on public hearing procedure. The draft is briefly summarized as follows.

Formal Requirements. If the owner of the right of patent application or patentee completes a reinvention, the patent-of-addition can be applied. It can be filed within the effective period of the original patent. Its category must be the same as of the original patent, i.e. the original patent is an invention patent, the patent-of-addition must also be an invention patent.

Substantive Requirements. The reinvention prescribed in the preceding paragraph refers to an invention which is accomplished by utilizing the major contents of the original patent, i.e., the main technical contents and characteristics stated in any of the claims of the original patent. The patent-of-addition also needs to meet the patent requirements, i.e., utility, novelty, and non-obviousness.

Although the draft is now on public hearing procedure, the Taiwan Intellectual Property Office has already brought out a draft of patent law amendments. One of the major changes is to eliminate patent-of-addition related provisions. Details of the drafted amendments will be followed on our next issue of TIPS.