TIPO Amended Part One of the Patent Examination Guidelines regarding Application Procedures and Management

In view of the constant updating of legal interpretations and the issuance of recent judicial judgements in the field of intellectual property, TIPO has reviewed its Patent Examination Guidelines (PEG) to ensure that it maintains consistency with these changes. Part Two of the PEG regarding the substantive examination for invention patents was revised in the first half of 2022. Subsequently, in the latter half of 2022, TIPO promulgated the amendments to the Part One - the procedural section of the PEG. These changes came into effect on December 1, 2022.

The amendments introduce a number of illustrative examples in some chapters to reflect the updates to judicial practices. Moreover, the use of electronic signatures is encouraged in an effort to simplify formality requirements, and there has been some paraphrasing and several minor changes to wording in some chapters.

A summary of the principal revisions is outlined below.

Electronic signature (Chapter 1, Part 1)

Electronic signatures have become increasingly popular recently in various business activities and engagements with governmental agencies. TIPO had already accepted the use of e-signatures for some time; with these changes, written recognition of e-signatures on documents submitted to TIPO (such as powers of attorney or assignments) is now officially included in the PEG. Going forward, provided that an e-signature can be verified and compared, TIPO assumes authenticity and thus will accept any documents bearing said e-signatures. In case of any suspicion regarding authenticity, TIPO may request submission of a supplementary authenticity certificate or a paper copy of the same document with a hand-written signature. Examples of admissible and inadmissible e-signatures are provided.

Admissible: an e-signature presented in such a way that there is no difference from a wet signature.

Not admissible: an e-signature presented as if it were a printed text so that its authenticity in terms of being an individual’s signature is questionable.

Applicant (Chapter 3, Part 1)

It is stressed in the amended paragraph that, when the IP authority cannot ascertain consistency in terms of the identity of the names in the documents of the application forms for name changing and in the corroborative documents or other documents submitted simultaneously, the application day and the assignment day shall be the date on which the applicant is finally ascertained. Furthermore, when different applicants are merged to become one entity and supporting documents and statements reveal the same to be true, name changing shall be permitted since the applicants have kept consistency in terms of identity. (SAC-108-Appeal-No.1169).

Priority (Chapter 7, Part1)

Several examples of unacceptable priority documents are provided in the amendment.

Failed Example 1: a full text photocopy of the file wrapper of a US patent application.

The full copy includes all documents relating to a patent application, including those not part of the application such as a product catalog. Treating this file wrapper as a priority document essentially enlarges the scope of the first-filed application. In addition, the full text copy does not constitute evidence to demonstrate whether the applicant has truthfully obtained a priority document from a lawful foreign patent authority.

Failed Example 2: a filing receipt of a patent application accompanying a photocopy of a patent specification.

A filing receipt contains a limited amount of information. It shows the name of the applicant and the title of the invention at the time of filing as well as an assigned application number and the filing date. Without any manifestation of a first-filed application, it cannot be used in conjunction with a photocopy of the patent application to serve as a priority document.

Failed Example 3: a filing receipt of a design patent application under the Hague Agreement accompanying a photocopy of a design patent specification.

The reason for rejection is similar to that of the previous example. Notably, a priority document under the Hague Agreement accepted by TIPO shall bear a statement reading “CERTIFIED TRUE COPY OF THE HAGUE APPLICATION.”

Failed Example 4: a certificate of a registered Community Design.

From a quick glance at the formality appearance, it may be easily mistaken for a priority document. However, an EUIPO application for design registration shall read “…an exact copy of the application for a registered…”

Deposit for biological material (Chapter 8, Part 1)

The Patent Act requires the applicant—before or on the same day of filing—to make a deposit of a microorganism which is the subject matter or the used bio-material relating to a patent application. But instead of making a deposit in Taiwan, the applicant may alternatively make such a deposit in a facility in a foreign country with which TIPO has entered into a reciprocal agreement, and then submit a deposit receipt to TIPO within 16 months of the priority date. However, if said depository facility in a reciprocal country does not hold the status of an International Depository Authority as per Article 7 of the Budapest Treaty, the proof of the foreign deposit submitted later to TIPO shall include not only the deposit receipt from said facility but also a report capable of supporting the viability of the deposited microorganism. Without a viability report, TIPO will deny the foreign deposit on the grounds of being incomplete.