Several Changes to the Patent Examination Guidelines
Take Effect on July 1, 2022

In June, the Taiwan IP Office made several changes to six chapters in the Patent Examination Guidelines (“Revisions”). In an effort to improve examination quality, unify the Office’s internal perspectives on different cases, and more effectively address frequent questions that have arisen during the development of examination practices, these finalized changes became effective as of July 1, 2022. The key points are summarized as follows.

1.      New measures for the examination of a pending invention application in a parallel filing scenario (Chapter 3)

Filing an invention patent application and a utility model application on the same day, by the same applicant(s) and for the same subject matter(s) is a practical strategy for acquiring early protection of an invention. Since a utility model is not examined, it will be granted rather quickly, in just a few months. A granted utility model serves as a legal protection of the shape and structure of an article or the combination thereof. This occurs while the examination of an invention application for the same innovative matter will be pending, with the application taking around a year to be granted. Once the invention patent application has been allowed, the applicant opts for either the allowed invention application or the granted utility model. Upon choosing the former, the utility model right will then extinguish from the publication date of the invention patent, and the invention patent right will come into effect seamlessly.

Regarding the practice of parallel filing, there were some questions as to how the IP Office should properly handle a pending invention patent application if, in the meantime, the granted utility model that covers the same matters is invalidated. The new Revisions stipulate that, since both of them cover the same subject matter(s), the validity of an invention patent application shall remain consistent with the validity of the granted utility model. Generally speaking, the examination of the invention patent application should be suspended until the validity decision of the utility model is finalized after the appeals, if any. However, there are exceptions. For example, the examiners may clearly identify rejections in the invention application, or the applicant may amend claims in the invention application which makes them substantively different from the claims in the utility model. If any of the exceptions are applicable, the examination of the invention application may continue without a pause. Nevertheless, during the examination, reference may be made to the evidence presented in the case of the utility model’s validity.

Furthermore, if a utility model is deemed to be invalid but the outcome has not yet been finalized at the time when the invention application has been allowed but not yet granted, the examiner shall withdraw the allowance of the invention application. In order to maintain consistency between them in terms of validity, the examiner shall suspend the examination of the invention application, and it may resume only after the validity of the utility model has been confirmed.

2.      Caution to be taken in undisclosed disclaimers (Chapters 6 and 9)

Amendments to patent claims shall not go beyond the scope of the disclosure as filed. Removal of specific matter that is part of prior art will be considered an introduction of new matter if such removal is not directly and unambiguously derivable from the disclosure as filed. But when the claimed scope after amendment cannot be clearly and concisely determined, an “undisclosed disclaimer” that is employed for excluding some specific matter that is part of prior art will then not be considered an introduction of new matter.

An undisclosed disclaimer is sometimes used when an applicant tries to overcome a rejection in an Office action. However, a question arose as to whether such a practice is permissible during a voluntary amendment.

The Revisions clarify that, in the case of disclaiming matter voluntarily before the issuance of an Office action, the applicant shall submit sufficient supplementary prior art documents and supportive statements to the examiner who has the discretion to determine whether the disclaimer involves new matter. Without supplementary submissions, the disclaimer will be considered to introduce new matter, except for cases in which the prior art information was previously provided in the disclosure as filed.

The foregoing practice regarding undisclosed disclaimers shall be similarly applied in post-grant amendments.

3.      Limited permissible narrowing of claimed scopes but broadened corrections of obvious errors (Chapter 7)

Types of amendments are somewhat limited when an application is “made final,” or in the phase of a final Office action. Narrowing the claimed scope is one of the permissible amendments.

The Revisions point out particularly that, in general, additions of new claims are not a type of narrowing of the claimed scope, unless the increase of claim counts is inevitable due to a deletion of dependency followed by a decomposition of a multiple dependent claim. For example, it is permissible to amend a multiple dependent claim reading “an AC comprising a compressor according to any of Claims 1 to 3” to become two claims reading respectively “an AC comprising a compressor according to Claim 1” and “an AC comprising a compressor according to Claim 2,” where the dependency associated with Claim 3 is deleted.

Corrections of apparent errors that are easily identifiable in reference to the context of the entire disclosure by a skilled artisan in the same field are available types of amendments for coping with a final Office action. It is confirmed in the Revisions that the numbering, symbols, or necessary legends of drawings obviously inconsistent with those in the disclosure or in other drawings are subject to corrections during the final Office action stage. Moreover, apparent errors subject to correction can be of a technical nature—such as an incorrect or omitted symbol in a chemical or mathematical formula—if they occur as a result of manifest negligence or misrepresentation and cannot be otherwise understood but for a correction.

4.      Proof of viability and deposit required in the certification of biological material deposits (Chapter 14)

The deposit of microorganisms or other biological materials is a necessary part of the disclosure for meeting the enablement requirement of some life science-related patent applications. For a deposit made previously in a foreign depository that is reciprocally recognized by Taiwan, the same patent application enjoys a waiver of the local depository requirements in Taiwan if a certificate for the foreign deposit is submitted to the Taiwan IP Office within four months of the Taiwan filing date or sixteen months of the priority date.

Notably, as made clear in the Revisions, such a certificate shall contain information regarding the viability of the material as well as the details of the deposit that was made. Most of the certificates issued from depositories endorsed by member states of the Budapest Treaty have included these two pieces of information. However, if a certificate issued from another depository does not show the viability and the details of the deposit, such a foreign deposit does not waive the requirements of the local deposit. In such a case, the applicant is required to make the local deposit within four months from the filing date or sixteen months from the priority date.

Moreover, for cases in which there is a failure to submit proof of viability, the Revisions specifically require the examiner to explain why such an absence of submission would lead to a rejection of enablement in an Office action, so as to offer the applicant a chance to contest the rejection.

Please contact info@tsailee.com for any inquiries.