07.31.2019
Elevation into Law of Rule 291 of the Enforcement Rules Regarding Content Requirement for Divisional Patent Applications for Invention
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BY MENG-HSUEH KU
Rule 29 of the Enforcement Rules of the Patent Act has been elevated into law in response to the upcoming amendments to those parts of the Patent Act that have passed the third reading by the Legislative Yuan on April 16, 2019, were promulgated by Presidential Order on May 1, and currently await the date of the implementation to be set by the Executive Yuan.
Specifically, based on the requirements of the currently enforced Rule 29, where a request for divisional patent application is filed in accordance with Article 34, paragraph 2, item 2 of the Patent Act after the parent patent application has been approved, the request for divisional patent application should be based on the invention(s) stated in the specification or the drawing(s), and not on the claims that have been approved in the parent patent application; and when the request for divisional patent application stated in the preceding paragraph is filed, no change can be made to the specification, the claim(s), or the drawing(s) that have been approved in the parent patent application.
After the upcoming amendments are implemented, the original paragraph 6 of Article 34 is amended by incorporating Rule 29 as new paragraphs 6-7 of Article 34 as follows (differences are underlined):
Paragraph 6: where a request for divisional patent application is filed in accordance with Article 34, paragraph 2, item 2 of the Patent Act after the parent patent application has been approved, the request for divisional patent application should be based on the invention(s) disclosed in the specification or the drawing(s), and not claim the same invention(s) as those in the claim(s) that have been approved in the parent patent application; the examination of the divisional patent application resumes the examination procedure before the parent patent application has been approved.
Paragraph 7: no change can be made to the specification, the claim(s), or the drawing(s) that have been approved in the parent patent application, and the parent patent application is published with the claim(s) and the drawing(s) as approved.
1. Notice to Amend Rule 29, Rule 89, paragraph 1, Rule 90 of the “Enforcement Rules of Patent Act”
https://www.tipo.gov.tw/ct.asp?xItem=712469&ctNode=7452&mp=1
https://www.tipo.gov.tw/dl.asp?fileName=9731620283.pdf
Rule 29 of the Enforcement Rules of the Patent Act has been elevated into law in response to the upcoming amendments to those parts of the Patent Act that have passed the third reading by the Legislative Yuan on April 16, 2019, were promulgated by Presidential Order on May 1, and currently await the date of the implementation to be set by the Executive Yuan.
Specifically, based on the requirements of the currently enforced Rule 29, where a request for divisional patent application is filed in accordance with Article 34, paragraph 2, item 2 of the Patent Act after the parent patent application has been approved, the request for divisional patent application should be based on the invention(s) stated in the specification or the drawing(s), and not on the claims that have been approved in the parent patent application; and when the request for divisional patent application stated in the preceding paragraph is filed, no change can be made to the specification, the claim(s), or the drawing(s) that have been approved in the parent patent application.
After the upcoming amendments are implemented, the original paragraph 6 of Article 34 is amended by incorporating Rule 29 as new paragraphs 6-7 of Article 34 as follows (differences are underlined):
Paragraph 6: where a request for divisional patent application is filed in accordance with Article 34, paragraph 2, item 2 of the Patent Act after the parent patent application has been approved, the request for divisional patent application should be based on the invention(s) disclosed in the specification or the drawing(s), and not claim the same invention(s) as those in the claim(s) that have been approved in the parent patent application; the examination of the divisional patent application resumes the examination procedure before the parent patent application has been approved.
Paragraph 7: no change can be made to the specification, the claim(s), or the drawing(s) that have been approved in the parent patent application, and the parent patent application is published with the claim(s) and the drawing(s) as approved.
1. Notice to Amend Rule 29, Rule 89, paragraph 1, Rule 90 of the “Enforcement Rules of Patent Act”
https://www.tipo.gov.tw/ct.asp?xItem=712469&ctNode=7452&mp=1
https://www.tipo.gov.tw/dl.asp?fileName=9731620283.pdf
