Latest amendments to the enforcement rules of the Patent Act
Taiwan’s Ministry of Economic Affairs has announced that it is amending Articles 17 and 39 of the Enforcement Rules of the Patent Act.
Sequence listing will be submitted electronically and applicants will not be required to provide a hard copy. According to the current provisions of Article 17(6), where a patent application for an invention contains one or more nucleotides or amino acid sequences, the sequence listing must be submitted as part of the specification and a hard copy must be provided. Under the amendments, if an e-file complies with the Taiwan Intellectual Property Office’s (TIPO’s) search and examination standards (eg, a TXT file or a PDF file in which text can be copied), the applicant will not be required to provide a hard copy.
Under the current rules in Article 39, third parties can submit their opinion after a patent application for an invention is published in order to promote public participation in examinations. Patent applications for inventions are published for 18 months from the filing date – the first point at which the public only learns of their technical content. The rules stipulate that the period for any third party to submit an opinion is after the application has been published but before the examination decision has been issued. However, the average period for decisions to be made following examination is approximately 14 months, so the application may be granted before it is published. This means that third parties are often unable to submit their opinion under the current rules.
As industry professionals are familiar with the technology in their field, the citations that they can provide are helpful in the examination and improve the quality of the application. TIPO wishes to encourage the public to provide reference materials that are essentially public information for rejecting a patent application. Further, a third party may learn of the technical content of a patent application before it is published (eg, the entity may become aware of its technical content from foreign corresponding applications or in connection with the published utility model patent).
Now, the draft amendment states that the period for submitting a third-party opinion will be before the examination decision is issued, rather than between the dates that a patent application is laid open and the examination decision is issued.
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