Taiwan to Revise the Patent Act and
Examination Guidelines

published on 3 May 2017


Since the beginning of 2017, TIPO had been releasing several drafted as well as finalized Amendments to specific chapters in the Guidelines for Patent Examination (GPE). At  the end of last year, Taiwan's Legislative Yuan passed the bill of Patent Act Amendment which renewed provisions concerning grace period for novelty and inventiveness as well. The focus of the Amendments are outlined as follows:

Exception to Loss of Novelty and Inventive Step (Grace Period)

According to the revised Patent Act, which comes into force on May 1^st, the term of grace period for exceptionally excluding novelty or inventiveness loss due to disclosure is to be extended from six (6) months to twelve (12) months for invention and utility model patent applications and to remain at six (6) months for design patent applications.

Furthermore, an exhaustive enumeration of disclosing instances in the pre-amendment statute has failed to cater to applicants’ demand. Comprehensive and adequate coverage of excepted disclosures was in urgency due to the diversification of how a technical or research result is to be revealed. Ever since May, facts of disclosures eligible for grace period will include both those desired by or against the will of an applicant.

However, this does not suggest that the grace period operates similarly as priority right. A priority right puts forward the effective filing date to create a period of absolute immunity whereas the grace period only exceptionally precludes a single fact of disclosure made by the applicant, its assignor, employee/employer, or a third person who becomes aware of invention from the applicant such as a commissioned, entrusted, instructed, contract-breaching, illegally coercing, fraudulent persons, or those persons with the intent of theft. Grace period does not immunize a patent application’s novelty or inventiveness from an independent invention or creation, made by an irrelevant individual, exposed earlier than its filing date or priority date, if any.

As for formality, an applicant no longer needs to explicitly make a statement on the patent application form upon filing. The applicant bears the burden of proof when the Office does not find the given case eligible for the grace period benefit.

On another note, the applicant is advised to note carefully that a “first-day” rule is presumed to a disclosure whose actual disclosing date is unable to be identified. For example, when an academic dissertation covering the technology applied for patent is printed “July 2017” as the only temporal information of publication. Without more evidence, the Office will presume July 1st of 2017 being the publication date. To rebut an unfavorable presumption, the applicant has the duty to prove it to the otherwise.

Post-Grant Amendment

Post-grant amendment to a patent shall be permitted to only (1) deletion of claim(s); (2) narrowing down of claim(s) scope; (3) correction of obvious or translational errors; and (4) clarification of ambiguous statement(s).[1] Nevertheless, “a post-grant amendment shall not substantially broaden or alter the scope of the claim(s) as published.”[2] Some criteria have provided in the GPE to exemplify which amendments are to be deemed a case of broadening or alteration. Beyond the remaining criteria for determining alteration, i.e. substitution of technical feature(s) by antonyms; redefinition of technical features; and apparent change of the subject matter of claim(s), the “failure of newly-added technical feature(s) to achieve invention’s purpose” is introduced and emphasized due to the revision. Invention’s purpose shall be construed to the entirety of the invention recited in each claim, in view of the problem to be solved, the proposed technical means, and the technical effect contrasting the prior art. If an amended claim “attenuates or fails to achieve” the invention’s purpose of pre-amendment claims, the Office determines such as an alteration. In other words, the amendment shall be permitted when the newly-added technical feature successfully enables an amended claim to meet invention’s purpose.

In addition, according to the revision, converting a claim referenced to another claim (e.g. an apparatus for implementing the process of claim 1) to an independent claim is a type of “clarification of ambiguous statement” in a granted patent. Thus such conversion shall be permitted.

Inventiveness

In Taiwan, a modified Graham Test is adopted to examine inventiveness by the following steps:

1. Determining the scope of Scope of the claim
2. Determining the content of prior art
3. Ascertaining the technical level of PHOSITA
4. Resolving the difference between invention and prior art
5. 5.Considering whether the difference is easy to be bridged over

In the 4^th step, the amended GPE requires the examiner to cite a “primary reference,” which is a single reference in the same field of the invention or solving substantially the same problem, as the basis. This is so required to avoid any examiner’s hindsight due to relevance between prior art and the invention. Next, in the final step, the amended GPE requires the examiner to firstly consider if the combination is obvious for either there existing a motivation to combine the primary and other auxiliary references or no motivation being necessary. If affirmative, the examiner shall subsequently consider if an argument of lack of inventiveness can be established in view of all factors integratively. The final step is illustrated in more detailed as the following.

Besides, the applicant may be mindful that a PHOSITA can actually be a group of fictitious persons if more appropriate, such as in a case of collaborative research which involves an interdisciplinary technical team. 

Invalidation Proceedings

During invalidation proceeding the patentee may initiate post-grant amendment (“PGA”) as a defense. Whether the PGA will be allowable relies on the latest granted and published version of patent scope. If the latest version is defective it is not an admissible basis examining whether the PGA substantially broadens or alters, and the examiner shall look into preceding version(s) of no defects. However, in the absence of such a previous and perfect version, the PGA would not be allowed and the patentee cannot be be granted the  benefit to cure or defend the patent at issue.

Now after the revision, as long as a sufficient support for PGA can be found in the pre-grant patent application including the specification, it can exceptionally serve as the examination basis for PGA. The patentee will then be given a chance to defend the patent that has been challenged.

Beside, during an invalidation proceeding in the case where patentee’s PGA goes beyond the granted scope, procedurally the counter party shall not add such new-matter introduction itself as another ground of patent invalidation. Instead, strategically the counter party may only pinpoint the fact of new-matter introduction to the Office seeking a rejection to the PGA.

Date of Effectiveness

The effective dates of each amended chapter of the GPE and the Patent Act are sorted out in below table.

for any questions relating to this topic, please contact us at cjchen@tsailee.com.tw