Thursday, November 24 2022   \  Published by Deep & Far Attorneys-at-Law.

TIPO Reminds Applicants of Revisions to Substantive Examination for Invention Patents

TIPO Reminds Applicants of Revisions to Substantive Examination for Invention Patents

The Taiwan Intellectual Property Office issued a summary of the revisions to some of the chapters in the Substantive Examination for Invention Patents of the Patent Examination Guidelines, which originally took effect in July, 2022. Some of the main points are as follows:

1. In the event that the applicant amends the claim by negative limitations to exclude any overlap with prior art before the issuance of an office action from the patent examiner, the applicant should still provide the patent examiner with prior art documentation and an explanation for further assessment. If no such documentation is provided, the applicant is deemed to have introduced 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.

2. Concerning biology-related inventions, the applicant should include documentation proving that biological materials deposited in a depository designated by a foreign country in its territory really exist and are viable. 

3. During examination of an invention application for the same creation as a utility model patent, if a decision invalidating the utility model patent in a utility model invalidation action has been made but has not yet become final and binding, the same consideration should be applied to the invention application. In principle, the examination of the invention application should continue after an administrative remedy for the utility model invalidation action is final and binding. However, depending on the circumstances of the case, the examiner may use the evidence presented in the utility model invalidation action as part of the examination

Ready to Get Started?

Contact Sales