08.16.2019
Revision of Article 34 of the Patent Act regarding Time Limits for filing Divisional Application for an Invention
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BY MENG-HSUEH KU
Article 34 of the Patent Act has been revised in response to the upcoming amendments to those parts of the Patent Act that will be implemented on November 1, 2019 as determined by the Executive Yuan.
Specifically, the currently implemented Article 34, paragraph 21 stipulates that the applicant may file an intended divisional application under the following time limits:
(i) before a reexamination decision on the original patent application is rendered; and
(ii) within thirty (30) days after the date on which an approval decision for the original patent application is served. However, it shall not be filed if a reexamination decision has been rendered.
After the revision of Article 34, paragraph 2 to be implemented on November 1, 2019, an intended divisional application may be filed under the following time limits (differences are underlined):
(i) before a reexamination decision on the original patent application is rendered; and
(ii) within three (3) months after the date on which an approval decision or a reexamination approval decision for the original patent application is served.
As for the time limit (ii), an applicant has three months to consider whether any technical solutions stated in the specification but not in the patented claims should be pursued in divisional applications after receipt of a Notice of Allowance at either the preliminary examination or reexamination stage.
Based on the Patent Q&A published by the Taiwan Intellectual Property Office, although certain articles have not been revised yet in accordance with the upcoming amendments, it is believed that the main concepts remain unchanged. In this regard, the duration of three months is statutory and thus remains non-extendable2, and filing a divisional application is allowable after the patent certificate fee and the first-year patent annuity for its original patent application have been paid in advance3.
However, as for the time limit (i), the option for filing a divisional application after receipt of a Decision of Rejection at the reexamination stage remains prohibited4. As such, filing a divisional application is preferably considered and prepared once the original patent application has entered reexamination.
1 Patent Act 2017: https://www.tipo.gov.tw/public/Attachment/752949427.pdf
Enforcement Rules of the Patent Act: https://www.tipo.gov.tw/dl.asp?fileName=752313512897.pdf
Article 34 of the Patent Act has been revised in response to the upcoming amendments to those parts of the Patent Act that will be implemented on November 1, 2019 as determined by the Executive Yuan.
Specifically, the currently implemented Article 34, paragraph 21 stipulates that the applicant may file an intended divisional application under the following time limits:
(i) before a reexamination decision on the original patent application is rendered; and
(ii) within thirty (30) days after the date on which an approval decision for the original patent application is served. However, it shall not be filed if a reexamination decision has been rendered.
After the revision of Article 34, paragraph 2 to be implemented on November 1, 2019, an intended divisional application may be filed under the following time limits (differences are underlined):
(i) before a reexamination decision on the original patent application is rendered; and
(ii) within three (3) months after the date on which an approval decision or a reexamination approval decision for the original patent application is served.
As for the time limit (ii), an applicant has three months to consider whether any technical solutions stated in the specification but not in the patented claims should be pursued in divisional applications after receipt of a Notice of Allowance at either the preliminary examination or reexamination stage.
Based on the Patent Q&A published by the Taiwan Intellectual Property Office, although certain articles have not been revised yet in accordance with the upcoming amendments, it is believed that the main concepts remain unchanged. In this regard, the duration of three months is statutory and thus remains non-extendable2, and filing a divisional application is allowable after the patent certificate fee and the first-year patent annuity for its original patent application have been paid in advance3.
However, as for the time limit (i), the option for filing a divisional application after receipt of a Decision of Rejection at the reexamination stage remains prohibited4. As such, filing a divisional application is preferably considered and prepared once the original patent application has entered reexamination.
1 Patent Act 2017: https://www.tipo.gov.tw/public/Attachment/752949427.pdf
Enforcement Rules of the Patent Act: https://www.tipo.gov.tw/dl.asp?fileName=752313512897.pdf
