Taiwan: Amendments to Part II “Substantive Examination for Invention” of the Patent Examination Guidelines Effective on July 1, 2022

[ October 13, 2022 ] >Back
Revisions have been made to Chapters 3, 6, 7, 8, 9, and 14 of Part II “substantive examination for invention” of the patent examination guidelines – the main highlights of which are as follows:

1. Chapters 3“Patentability” – 5.7.2 Notes for Examination
Additional paragraphs 5 and 6 have been added as the situation that the same creation applied for invention and utility model together. It details examination principles for the invention, during the examination of the invention, or after approval but prior to the publication of that invention, if the utility model application is invalidated but has yet to be final and binding.

2. Chapter 6 “Amendments” - 4.2.2 Permissible Omissions
If the applicant amends the claim by negative limitations to exclude any overlap with prior art (disclaimers) before an office action is issued, the applicant should provide prior art documentation and an explanation for further assessment. If not, the application is deemed to introduce a new matter. Exceptions are made for applications where prior art is already disclosed in the descriptions, patent claims, or drawings of the original application as filed.

3. Chapter 7 “Office Action and Final Decision” – 3.1.2 Reduction of Patent Claim Scope
It states that besides the situation that “partial deletion of cited or dependent claims and a breakdown of remaining claims”, any newly added claims are not included within the “reduction of patent claim scope” referred to in the revision limitations of the final notice.

4. Chapter 9 “Corrections” – 6. Notes for Examination
Patent examination principles have been added regarding negative limitations to exclude any overlap with prior art (disclaimers) in accordance with revisions to Chapter 6.

5. Chapter 14 “Biology-Related Inventions” – 4.2.4 Notes for Deposits
A new paragraph (3) has been added, which stipulates that the applicant, in accordance with the Article 27 Paragraph 5 of the Patent Act, should include documentation proving that biological materials deposited in a depository designated by a foreign country in its territory exist and are viable.

Source: https://www.tipo.gov.tw/en/cp-282-913017-1b90e-2.html