Taiwan

Deep & Far patent attorney Yu-Li Tsai assesses the impact of the newest examination practices on utility models in Taiwan

In November 2014, the Taiwan Intellectual Property Office (TIPO) issued a compilation of supplemental practices for examining corrections or invalidation proceedings for granted patents. A portion of the updated practices is related to the examination of corrections for utility model patents.

Article 118 of the newest Taiwan Patent Act provides that upon receiving a request for a correction for a utility model patent, TIPO will conduct a formality examination of the correction. Article 118 also provides that a decision rejecting the correction will be rendered after the formality examination finds that the correction obviously extends beyond the scope of content disclosed in the claims or drawings as published.

In addition, Article 70 of the Enforcement Rules of the Taiwan Patent Act provides that when a correction is made to the claims, if parts of the claims are deleted, the claim sequence of the remaining claims will not be changed. Also, when a correction is made to the drawings, if parts of the drawings are deleted, the drawing designations of the remaining drawings will not be changed.

In view of these two articles, TIPO issued supplemental practices for examining corrections to a utility model patent.

General rule: a formality examination is adopted for examining corrections to utility model patents, and the method of judging whether a correction “obviously extends beyond” as stipulated in Article 118 of Taiwan Patent Act is adopting the standards of “separate comparison” and “specific recitation”.

Separate comparison means that the examination of a claim in the corrected edition is based on a corresponding claim in the published edition, and the examination of a drawing in the corrected edition is based on the corresponding drawing in the published edition. Specific recitation means that the corrected contents are specifically recited in the published claims or drawings.

Claim corrections for utility model patents: under Article 70 of the Enforcement Rules, during a formality examination, the claims will be separately compared and the claim number of a claim in the published edition must be correspond to the number of the corresponding claim in the corrected edition. For example, Claim 1 in the published edition must correspond to Claim 1 in the corrected edition, otherwise the examiner will notify the patentee to resubmit the correction edition with the correct format.

Drawing corrections for utility model patents: although the examination of a drawing in the corrected edition must be based on a corresponding drawing in the published edition, if the patentee only corrects the element’s symbol in the drawing (for example, correcting the element’s symbol based on the contents specifically recited in the specification, or correcting obvious errors of the element’s symbol), rather than deleting from or adding to the drawing, then the correction will not be considered as “obviously extending beyond”.

Specification corrections for utility model patents: the correction of a specification should be examined based on the published texts recited in the claims or forms of the drawings in order to judge whether an “obviously extending beyond” situation should be established. If the patentee corrects the specification based on the design in a published drawing, the examiner will consider the correction as “obviously extending beyond” because the design of the drawing is not a text and cannot be compared with each other formally.

There are two exceptional cases for the rule set forth above. The first is that the correction of the specification is based on the text in a flow chart diagram. The second is that the patentee only corrects the ‘brief description of drawings’ in the specification based on the published drawings. The reason is that the brief description of the drawings only briefly describes the drawings in the sequence of the figure numbers and is thus comparable.

For example, the patentee petitions to correct the specification based on the reason that the ‘brief description of drawings’ depicted that Figure 1 is a three-dimensional diagram, when in fact, Figure 1 is a sectional diagram.

If the patentee only corrects omitted words, or deletes pleonasms or repeated words so that the meaning of the original content is unchanged, the correction will not be considered as “obviously extending beyond”. In addition, the patentee should also state that the correction was made to correct errors under Article 67(1)(3) of the Taiwan Patent Act.

If the patentee only copies the text from the claims or the drawings to the specification, the patentee should state that the correction was made to clarify ambiguous descriptions under Article 67(1)(4) of the Taiwan Patent Act.

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