02.26.2018
Upcoming Revisions of Article 34, Article 107, Article 120, Article 142 of the Taiwan Patent Act regarding Divisional Application 1
SHARE
BY KUKU
In lines with the upcoming revisions of several patent regulations, the TIPO also consider loosening limitations imposed on divisional applications, in order to encourage applicants to file divisional applications under a more flexible framework of regulations.
Specifically, for an Invention application, the current Article 34, paragraph 13 stipulates that the applicant may file a divisional application under the following time limit:
(i) within thirty (30) days after the date on which a decision of the preliminary examination rendering the invention application to be allowed is served; and
(ii) before the date the reexamination of the invention application is rendered.
A significant change will revise the time limit (i) from thirty (30) days to three (3) months, which corresponds to the time period for paying the patent certificate and 1st annuity fees (as stipulated by Article 52), and will allow the applicant to choose to file a divisional application within three (3) months from the data on which a decision of the reexamination rendering the invention application to be allowed is served.
To ensure that the relevant stipulations are more comprehensive, the requirements of Rule 29 of the Enforcement Rules of the Taiwan Patent Act are going to be incorporated into the current Article 34.
As for a Utility Model application, the current Article 107, paragraph 2 stipulates that a request for divisional application shall be made before a decision for the original utility model application is rendered. After to the above revisions to Article 34 (for an Invention application), the applicant may choose to file a divisional application for a utility model application either before the decision for the utility model application is rendered or within three (3) months from that date on which a decision rendering the utility model application to be allowed is served.
As for a New Design application, the above revisions to Article 34 (for an Invention application) will also be applicable mutatis mutandis under Article 142, and the original limitation (imposed by Article 130, paragraph 2) on divisional applications will be abolished. In other words, the applicant may choose to file a divisional application for a new design application either before a decision of the reexamination regarding the new design application is rendered or within three (3) months from the data on which a decision of the preliminary examination or the reexamination rendering the new design application to be allowed is served.
In lines with the upcoming revisions of several patent regulations, the TIPO also consider loosening limitations imposed on divisional applications, in order to encourage applicants to file divisional applications under a more flexible framework of regulations.
Specifically, for an Invention application, the current Article 34, paragraph 13 stipulates that the applicant may file a divisional application under the following time limit:
(i) within thirty (30) days after the date on which a decision of the preliminary examination rendering the invention application to be allowed is served; and
(ii) before the date the reexamination of the invention application is rendered.
A significant change will revise the time limit (i) from thirty (30) days to three (3) months, which corresponds to the time period for paying the patent certificate and 1st annuity fees (as stipulated by Article 52), and will allow the applicant to choose to file a divisional application within three (3) months from the data on which a decision of the reexamination rendering the invention application to be allowed is served.
To ensure that the relevant stipulations are more comprehensive, the requirements of Rule 29 of the Enforcement Rules of the Taiwan Patent Act are going to be incorporated into the current Article 34.
As for a Utility Model application, the current Article 107, paragraph 2 stipulates that a request for divisional application shall be made before a decision for the original utility model application is rendered. After to the above revisions to Article 34 (for an Invention application), the applicant may choose to file a divisional application for a utility model application either before the decision for the utility model application is rendered or within three (3) months from that date on which a decision rendering the utility model application to be allowed is served.
As for a New Design application, the above revisions to Article 34 (for an Invention application) will also be applicable mutatis mutandis under Article 142, and the original limitation (imposed by Article 130, paragraph 2) on divisional applications will be abolished. In other words, the applicant may choose to file a divisional application for a new design application either before a decision of the reexamination regarding the new design application is rendered or within three (3) months from the data on which a decision of the preliminary examination or the reexamination rendering the new design application to be allowed is served.
1 Reference: The second public hearing held on January 15, 2018 regarding draft amendments to part provisions of the Patent Act
2 Patent Engineer in Patent Department
3 Patent Act 2017 ; Enforcement Rules of the Patent Act
2 Patent Engineer in Patent Department
3 Patent Act 2017 ; Enforcement Rules of the Patent Act
