To reflect the practical needs of patent examination, TIPO has added new examination criteria and notes to the Patent Examination Guidelines, which include two applications (invention and utility model) for the same creation, disclaimers, final notice limitations, and deposit of biological materials. TIPO hopes to enhance the quality of patent examinations by providing unified standards. Main revisions include the following:

 

I. Part II Chapter 3 “Patentability”

 

Additional paragraphs 5 and 6 have been added under “5.7.2 Notes for Examination” for when two applications (invention and utility model) are filed for the same creation. Specifically, it details examination principles for the invention application if – during the examination of the invention patent, or after approval but before invention published – the utility model application is invalidated but has yet to be final and binding.

 

II. Part II Chapter 6 “Amendments”

 

Under “4.2.2 Permissible Omissions,” in the event that the applicant amends the claim by negative limitations to exclude any overlap with prior art (disclaimers) 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 application is deemed to introduce 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. 

 

III. Part II Chapter 7 “Office Action and Final Decision”

 

Under 3.1.2 “Reduction of Patent Claim Scope,” stipulations in paragraph 6 that require “partial deletion of cited or dependent claims and a breakdown of remaining claims” have been moved to the newly added paragraph 7. It also states that besides the aforementioned situation, the additions of new claims are not included within the “reduction of patent claim scope” referred to in the revision limitations of the final notice.

 

IV. Part II Chapter 9 “Corrections”

 

Under “6. Notes for Examination,” patent examination principles have been added with regard to negative limitations to exclude any overlap with prior art (disclaimers) in accordance with revisions to chapter 6.  

 

V. Part II Chapter 14 “Biology-Related Inventions”

 

A new paragraph (3) has been added to “4.2.4 Notes for Deposits” which stipulates that the applicant, in accordance with the provisions of 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. 

 

VI. Other Revisions

 

Other revisions include changes to the wording to reflect new regulations, as well as to ensure consistency and prevent misrepresentation within all chapters.

 

 

Link: Revisions to Chapter 3, 6, 7, 8, 9, and 14 of Part II “Substantive Examination for Invention Patents” of the Patent Examination Guidelines (Mandarin)