08.16.2021
The Taiwan IPO Modified the Patent Examination Guidelines
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BY CHIA-HSIUNG LIU
The Taiwan IPO modified several chapters of the Patent Examination Guidelines as indicated in the following table. The amended regulations became effective on July 14, 2021.
The primary amendments are summarized below:
1. Part 2, Chapter 1, the specification, the claims, the abstract, and the drawings
Several examination precautions are added in Section 2. 6, namely:
(1) An independent claim shall state the designation of the subject matter.
(2) A claim containing phrases such as “characterized in that,” “wherein the improvement comprises,” or similar expressions is not necessarily presented in two-part form.
(3) Guidelines are included to determine whether annotations in parentheses in the claims are clear.
2. Part 2, Chapter 6, amendment
(1) Amendments to a negative presence to exclude an overlapping range with the prior art are explicitly limited to only overcome issues regarding lack of novelty, lack of fictitious novelty, and/or the first-to-file principle. However, such amendments cannot be utilized to exclude a citation document that was “filed on the same date.” In addition, if an application for an invention patent includes the term “human” and is considered as an invention contrary to public order or morality, such an application also can be amended by excluding the term “human.”
(2) Regarding modifications to the upper bounds and/or lower bounds ending point values disclosed in a value range in a claim, if the following two conditions are met at the same time, such a modification is allowable and will not be considered as introducing new matters. Two additional examples are added for clarity.
(i) The modified ending point value in the value range has been disclosed in the specification, the claims, and the drawings upon the filing.
(ii) The modified value range has been disclosed in the value range in the specification, the claims, and the drawings upon the filing.
3. Part 5, Chapter 1, patent right invalidation
(1) Section 3.3.2, hearing is added.
(2) With regard to cases where an original invalidation decision is revoked and the invalidation application should be re-examined by the Taiwan IPO because of new matters and/or new evidence submitted in the stage of administrative remedy actions, guidelines are added to regulate the judgement as well as examination of the new reasons and/or the new evidence by the court.
4. Others
Other modifications include minor adjustments to the order of the sections, modifications to the contents in several examples for clarity, modifications to ensure consistency with governing law, and modifications in several chapters for consistency and/or correction of typographic errors.
(Summarized and translated from the News published on the TIPO’s website)
*International Patent Division of Tai E International Patent & Law Office
The Taiwan IPO modified several chapters of the Patent Examination Guidelines as indicated in the following table. The amended regulations became effective on July 14, 2021.
| Part | Chapter |
| 2 (invention patent substantive examination) | 1 (specification, claims, abstract, and drawings) 2 (how to define an invention) 3 (patentability) 4 (invention unity) 5 (patent priority) 6 (amendment) 10 (division and conversion) 11 (patent term extension) 13 (pharmaceutical invention) 14 (biological invention) |
| 3 (design patent substantive examination) | 1 (specification and drawings) 5 (patent priority) |
| 4 (utility model patent examination) | 3 (technical evaluation report) |
| 5 (invalidation examination) | 1 (patent right invalidation) |
The primary amendments are summarized below:
1. Part 2, Chapter 1, the specification, the claims, the abstract, and the drawings
Several examination precautions are added in Section 2. 6, namely:
(1) An independent claim shall state the designation of the subject matter.
(2) A claim containing phrases such as “characterized in that,” “wherein the improvement comprises,” or similar expressions is not necessarily presented in two-part form.
(3) Guidelines are included to determine whether annotations in parentheses in the claims are clear.
2. Part 2, Chapter 6, amendment
(1) Amendments to a negative presence to exclude an overlapping range with the prior art are explicitly limited to only overcome issues regarding lack of novelty, lack of fictitious novelty, and/or the first-to-file principle. However, such amendments cannot be utilized to exclude a citation document that was “filed on the same date.” In addition, if an application for an invention patent includes the term “human” and is considered as an invention contrary to public order or morality, such an application also can be amended by excluding the term “human.”
(2) Regarding modifications to the upper bounds and/or lower bounds ending point values disclosed in a value range in a claim, if the following two conditions are met at the same time, such a modification is allowable and will not be considered as introducing new matters. Two additional examples are added for clarity.
(i) The modified ending point value in the value range has been disclosed in the specification, the claims, and the drawings upon the filing.
(ii) The modified value range has been disclosed in the value range in the specification, the claims, and the drawings upon the filing.
3. Part 5, Chapter 1, patent right invalidation
(1) Section 3.3.2, hearing is added.
(2) With regard to cases where an original invalidation decision is revoked and the invalidation application should be re-examined by the Taiwan IPO because of new matters and/or new evidence submitted in the stage of administrative remedy actions, guidelines are added to regulate the judgement as well as examination of the new reasons and/or the new evidence by the court.
4. Others
Other modifications include minor adjustments to the order of the sections, modifications to the contents in several examples for clarity, modifications to ensure consistency with governing law, and modifications in several chapters for consistency and/or correction of typographic errors.
(Summarized and translated from the News published on the TIPO’s website)
*International Patent Division of Tai E International Patent & Law Office
