International report - Amendment to patent examination guidelines regarding determination of filing dates 16 Feb 11
Formosa Transnational - Taiwan
In order to harmonise Taiwan’s practice further with international patent prosecution practice, the Taiwan Intellectual Property Office (TIPO) recently amended the Procedural Examination Guidelines. The amendment focuses on how to determine the filing date of a patent application.
In Taiwan, patent applicants are required to submit certain information and documentation as part of an application. As this information and documentation are often not submitted with the application itself, TIPO has attempted to set down which items must be submitted in order for an applicant to receive an official filing date for an application.
As such, the amendment stipulates:
- The requirements for obtaining a filing date.
- The applicant’s information requirements.
- The requirements regarding the description and drawing(s) needed to obtain a filing date.
- How to process an application in which a portion of the description or drawings are missing.
- How to process a patent application in which the specification and drawing(s) are submitted in a foreign language.
This portion related to recording the filing date in the amendment was announced on 21st October 2010, and took effect on 1st January 2011.
Determination of filing date
According to the Patent Act, the filing date of a patent application is the day when the application form, along with the complete specification and necessary drawings, are submitted. However, there remains ambiguity regarding the meaning of the term “complete”. In past practice, TIPO struggled with the issue of whether it could record a filing date for a patent application that did not contain the applicant’s information or contained only a portion of the description or drawings. In order to resolve this issue, the amendment clearly stipulates that the filing date is obtained when the “patent applicant has filed documents that contain a complete disclosure of the invention and indicate the applicant’s intention to apply for a patent”.
TIPO explained at a public hearing that a patent application must be filed by an applicant which has the right to file the application and to indicate its intention of applying for a patent. Thus, an application must clearly indicate the name of the individual or entity applicant, and such applicant must be entitled to apply for the patent. As such, if the applicant’s information is missing in the application, or if the applicant indicated on the application form that it is not entitled to apply for the patent, the application must be rejected due to the lack of a right to file. The amendment clearly stipulates that if the applicant’s information is not indicated in the application, the application will be rejected accordingly.
However, where the applicant fails to indicate the required information, it will be permitted to remedy this situation and a filing date will be obtained on the date on which the information is provided to TIPO. For example, according to the amendment, if the applicant subsequently submits its information before TIPO rejects the application due to the failure to provide the information, the date on which the information is submitted will be the filing date. Where an applicant must amend its information after filing, the filing date will be the date on which the applicant’s information is confirmed received by TIPO.
Conditions to be met in order to obtain filing date
Whether the specification is complete for the purpose of obtaining a filing date will be determined by the description, claims and drawings. An applicant may, after the application form is filed, provide the title of the invention and or supplement the abstract without affecting the filing date. Drawings may be omitted if the disclosure of the invention can be completely disclosed without the assistance of drawings; if the application contains drawings, the drawings are considered necessary and omission will result in the incomplete disclosure of the invention, and a filing date might not be obtained.
Where description or drawings are incomplete
Previously, where the description or drawings were incomplete, an applicant was permitted to submit these during the procedural examination phase, and this would not affect the filing date. However, this practice is not in line with the "first to file" rule. The amendment brings Taiwan into compliance with the provision of Rule 21 of the Implementing Regulations of the Patent Act and into harmony with relevant regulations in other countries.
The purpose of the amendment is to stipulate the processing procedures for applications in which parts of the description, claims or drawings are missing, and also to clarify that the filing date shall be the date on which the missing portions are supplemented. However, where an applicant claims priority based on a foreign application, if the missing description, claims or drawings are completely contained in the claimed priority application, the date on which the application was originally submitted to TIPO will then be the filing date.
If the missing part does not need to be disclosed in regard to the invention, the applicant may claim, in a written statement, that the missing parts do not affect the disclosure of the invention and thus no supplementation is necessary. In such case, the filing date will be the date on which the original application was filed with TIPO. However, whether the disclosure is sufficient will be determined in the substantive examination of the application. If the applicant fails to submit a written reply and also fails to supplement the necessary items, the application will be rejected for failure to provide a complete specification or drawings.
Specification and drawings in foreign language
TIPO accepts specifications and drawings in foreign languages for patent applications provided that a Chinese translation is submitted within a specific period so as to retain the filing date originally obtained when the application was submitted. According to the same principle, the rule for handling missing information also applies to the supplemental submission of a Chinese translation. Whether supplementing the Chinese translation of the specification and drawings will affect the filing date depends on whether the supplementation is within the disclosure of the priority application and whether the missing part must necessarily be disclosed.
The revisions are more suitable for Taiwan’s domestic patent system and conform closely to international regulations, allowing for more precise implementation and thereby enhancing procedural examination quality and maintaining legality and fairness in the application process.
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