The amendment to Rule 28 of the Enforcement Rules of the Patent Act became effective on May 1, 2023. According to the amended rule, when filing a divisional invention patent application, if the specification of the divisional application is not identical to its original application, a marked-up version which indicates the differences between the specifications of the original and divisional applications should be submitted, and an explanation concerning the differences may be provided. The Taiwan Intellectual Property Office (TIPO) recently published an FAQ further explaining the above requirements, which is summarized hereunder.

1. In the mark-up version indicating the differences between the specifications of the original and divisional applications, any deletion should be highlighted by strikethroughs and any addition should be highlighted by underlines.

2. If only a fraction of the specification of the divisional application is different from the original application, the mark-up version may merely include the pages that involve the differences.

3. The mark-up version should be submitted even if only a typographical error is corrected in the specification of the divisional application. However, where the original and divisional applications only differ in the title of invention, the mark-up version is not required.

4. Where the mark-up version is required but not submitted by the applicant, the divisional application still will be accepted by the TIPO. However, if the examiner determines that the specifications of the original and divisional applications are not consistent, the examiner will notify the applicant to file a supplement within a specified time limit.

(Translated and summarized from the news announced on the website of the Taiwan Intellectual Property Office)

*Section Chief of International Patent Division at Tai E International Patent & Law Office