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Several important actions have been implemented in Taiwan Patent Practice in 2017, including: (I) extending the grace period from 6 months to 12 months after the date of disclosure (Effective on May. 1, 2017); (II) amending Examination Guidelines pertaining to invalidation request (Effective on Jan. 1, 2017); (III) amending Examination Guidelines pertaining to correction to a granted patent (Effective on Jan. 1, 2017); (IV) clarifying that the Examiner has the obligation to explain why two prior art references or more can be combined to be a ground of obviousness rejection in an office action (Effective on July. 1, 2017).
I. Extending Grace Period from 6 Months to 12 Months
An amendment related to the grace period under Paragraph 3 of Article 22 of Taiwan Patent Act has been effective on May 1, 2017. The amendments to Paragraph 3 of Article 22 of Taiwan Patent Act are summarized as below:
- The grace period for invention applications is extended from 6 months to 12 months, and the grace period applies no matter the disclosure is made intentionally or unintentionally by the applicant. However, patent publications of the applicant are not eligible events for the grace period.
- Statement for the grace period and relevant evidences at the time of filing a patent application are no longer required.
- Providing document(s) of proof of disclosure is no longer required.
It should be noted that the grace period, 12 months, is calculated 12 months from Taiwan filing date rather than its foreign priority date if any.
II. Amending Examination Guidelines Pertaining to Invalidation Request
The amendment to Examination Guidelines pertaining to invalidation request is summarized as below:
- When two or more than two invalidation requests are filed against a granted patent, the invalidation case accompanied with a correction made by the patentee shall be examined first.
- When two corrections are made by the patentee during an invalidation proceeding, the former one is not deemed as withdrawn if the two corrections are not controversy.
- When the evidence to an invalidation request is acquired from internet or in a foreign language, the examiner is entitled to investigate the evidence on his administrative authority or to ask the invalidation requester to prove the evidence is real or translate the evidence into Chinese.
- Only in the situation that a claim is regarded as invalid in a final judgement of a civil lawsuit, then the examiner is entitled to initiate an administrative examination to invalidate the claim.
III. Amending Examination Guidelines Pertaining to Correction to an Granted Patent
The restriction of correction to a granted patent is relaxed (http://www.ldoceonline.com/dictionary/restriction) after amendment. According to the new Examination Guidelines, a correction shall be granted if a correction does not constitute new matter and does not diminish the original purpose of the invention.
IV. Examiner Is Obligated to Prove “a motivation to combine”
In the amendment to Examination Guidelines effective on July 1, 2017, the Examiner is required to clearly explain why two prior art references or more can be combined to be a ground of obviousness rejection in an office action. Examination Guidelines 3.4.1 suggests that the motivation to combine could be concluded based on the following situations: (1) if the technical fields of the prior art references are similar; (2) if the problems to be solved of the prior arts are similar; (3) if the functions that the prior art references perform are similar; (4) if one prior art reference refers to another one.
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