TIPO to Amend Rules about
Biological Sequence Disclosures and
Third Party Observations¹

TIPO announced on April 6, 2020, that two Articles in the Enforcement Rules of the Patent Act will be amended. TIPO proposed a draft to invite public comment for an open period of about 60 days. The amendment concerns the procedural rules during patent prosecution.

◎　E-Submission of Biological Sequence Disclosures

To suffice the duty of disclosure, Article 17 of the Enforcement Rules specifies the structure of a patent specification to include the title of invention, the field of technology, the description of invention, etc., in its order. For a patent application containing biological materials, submission of the necessary amino acid and nucleotide sequence is a part of the duty of disclosure. To submit sequence listings, the applicant is required to use TIPO’s template. Moreover, the sequence pasted in the template shall be printed in paper for submission.

According to the new rule that TIPO proposes, the sequence listing can be submitted only as an electronic document of a certain built-in template provided by TIPO. Specifically, the applicant can submit a TXT or content-copyable PDF only. The new Article 17 not only serves the examiner convenience to perform search but also benefits to the reduction of paper consumption.

◎　Enlarged Time Window for Third Party Observation

Third party observation is available for any interested parties to submit evidence and/or arguments seeking to reject patentability of an application. Pursuant to Article 39 of the Enforcement Rules, observation is open from publication of an application until an examination decision is concluded. 

An application will be published in 18 months from filing. However, thanks to TIPO’s dedicating efforts to clear out backlogs, the mean pendency has been efficiently dropped to 14 months. It suggests that some cases would not have a chance to open for observation before grant. The unpublished period seems to overlook the fact that the interested parties may still get to learn of the existence of an unpublished Taiwanese filing from a foreign counterpart, a utility model of a parallel filing, or any other circumstance. To rebalance the tilted interests between the patent applicant and the general public, TIPO proposes to enlarge the observation time window from an application’s very beginning. Therefore, third party observation will be available at any time from filing until an examination decision is concluded. Under the proposed Article 39, a case will receive challenges from the public earlier.