BY CHIA-HSIUNG LIU

The Taiwan Intellectual Property Office amended Chapters 1, 3~8, 14, 17, 19, and 20 in Part I of the Patent Examination Guidelines. These amendments became effective on December 01, 2022 and are summarized below.

1. Chapter 1: Procedure for filing

According to Section 1.2.4 Signatures for electronic filing, a signature is acceptable if a corresponding signature, seal, or electronic signature can be utilized for comparison. For example, if a signature appears to be typewritten, the applicant may be required to submit additional proof because such a signature cannot be confirmed to have been made by an individual.

2. Chapter 3: Applicants

The contents of Section 3.1 Changing inventor, Section 4.1 Modifying applicant’s name, and Section 4.5 Modifying inventor’s name are adjusted, and examples are included. For example, if names in simultaneously submitted application documents are different, such incorrect names can be remedied, and no modification procedure is required. Besides, following a judgment, names can be modified if different applicants belong to an identical subject.

3. Chapter 5: Filing date

According to Section 1.1 Application form, the filing date is established upon determination of the applicant’s name. If a change of the applicant’s name in a submitted application form exceeds aspects relating to an identical subject, the filing date will not be established until the applicant’s name is determined. In this regard, new examples regarding a subject being changed, applicants being added, and applicants being excluded are provided. Besides, for a design application from a foreign (or Chinese) applicant, the design title is required to be disclosed in the foreign (or simplified Chinese) document.

4. Chapter 7: Priority and grace period

In Section 1.5 International certified priority documents and time period for providing the same, examples of incorrect documents are included. File wrappers of US applications as well as filing receipts and corresponding specifications in US applications and Hague Agreement design applications are not considered acceptable.

5. Chapter 8: Deposit of biological material

According to Section 4 Certificate of deposit of biological material, certificates of deposits issued by international depositories that are not recognized under Article 7 of the Budapest Treaty are required to include viability information.

6. Chapter 19: Patent right change

In Subsection 6.2 Documents for applying in Section 6 pledge establishment, the application documents for a pledge establishment are amended based on Rule 67 of the Enforcement Rules of the Patent Act effective from October 20, 2022. A patent certificate is no longer required, and an application form and the agreement or document(s) of proof need to be submitted.

7. Other:

Additional contents are included and typographic errors are amended.

(Summarized and translated based on the website of the Taiwan IPO)

*Patent Attorney at Tai E International Patent & Law Office