Recent changes in Taiwanese patent practice

In order to reflect industry needs and to resolve problems with the existing patent system, the Taiwan Intellectual Property Office (TIPO) is planning a series of changes for patent regulation and the examination guidelines. TIPO has recently confirmed:

• the Taiwan-Japan cooperation on biological material deposits;
• the new regulation on delayed substantive examination; and
• the standard for claim amendment of a utility model patent at post-grant stage.

Taiwan-Japan cooperation on biological material deposits
On November 20 2014 Taiwan and Japan signed a memorandum on cooperation for biological material deposits and the Regulation for Biological Material Deposits Regarding Taiwan Patent Applications was also amended. Thus, as of June 18 2015, if an applicant plans to file a patent application involving biological material to be deposited in Japan and Taiwan, it needs to deposit the material in only one of the two countries. For example, the applicant may file a patent application in Taiwan first and then submit a certificate of deposit from the Japanese depository authorities (ie, the International Patent Organism Depositary and the Patent Microorganisms Depositary at the National Institute of Technology and Evaluation) to TIPO within four months of the filing date (or within 16 months of the claimed priority date). However, the deposit cannot be withdrawn once a certificate of deposit has been issued.

New regulation on delayed substantive examination
An applicant must file a request for substantive examination within three years of the filing date, and many applicants choose to file a request alongside their application. However, the applicant may regret the request for substantive examination for several reasons, such as a change of patent strategy or product marketing issues. As of April 1 2015, if an applicant filed the request at an earlier stage it can now file another request to delay the substantive examination, but it must give an exact date to restart the substantive examination no later than the statutory time limit. In other words, the patent application will still be examined within three years of the filing date, but the applicant can stop and then restart the substantive examination process. The request to delay must be filed before the first office action, the filing of a divisional application or any procedure that accelerates the examination. Further, the applicant cannot delay the substantive examination if the request for substantive examination was filed by a third party.

Standard for claim amendment of utility model patent at post-grant stage
Compared to invention patents, utility model patents have traditionally been simple and not substantively examined by examiners. However, as of July 13 2015, if an applicant intends to amend the claims of a utility model patent, the patent will be substantively examined in later procedures and the standard for determining whether the claims are supported by the specification will be relatively strict. For example, the applicant cannot add a technical feature disclosed in the specification but not present in the claims into the claims, even if the claims identify a genus concept and the new technical feature is a species concept. Therefore, an applicant planning to file a utility model patent application should consider putting all of the technical features in the claims. Alternatively, the applicant may bring an invalidation case, in which the claims of the utility model patent can be amended according the disclosure in the specification.

Ongoing developments
TIPO is now seeking comments on the following issues:

• whether the period for claiming priority should be extended;
• whether the US concept of provisional applications should be introduced; and
• whether the publication of design patents should be delayed and the patent term of design patents extended.