In order to meet the practical needs for patent examination and improve efficiency, the Taiwan Intellectual Property Office (TIPO) amended the Enforcement Rules of the Patent Act. The draft amendment was promulgated on March 24, 2023 and will become effective on May 1, 2023. The main points of the amendment follow.

1. To more efficiently determine whether a divisional application exceeds the scope of disclosure of the specification of the original application submitted at the time of filing, a marked-up version which indicates differences between the specifications of the original and divisional applications should be submitted when filing a request for division, and an explanation concerning the differences may be provided.
2. According to Paragraph 5 of Article 27 of the Patent Act, if an applicant has deposited a biological material in a foreign depository mutually recognized with the TIPO and has submitted the certification of deposit issued by the foreign depository within the statutory time limit, the applicant is exempted from the requirement of making a deposit in Taiwan. Under current practice, all of the foreign depositories mutually recognized with the TIPO are international depositories recognized by the Budapest Treaty which require that certifications of deposit and viability be combined. In view of this practice, the amended rules stipulate that a certification issued by a foreign depository should include a viability report.

(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