BY TOMMY C. C. TSAI

The Taiwan Intellectual Property Office (TIPO) published the Amendment Draft to the Patent Act on May 17, 2018 and held two public hearings regarding the Amendment Draft on December 21, 2017 and January 15, 2018, respectively. However, the Amendment Draft has not been passed yet. The following will focus on the Amendment Draft to Articles 34, 46, 71, 107, 119, 120, 130, 134, 141 and 142 of the Patent Act, wherein the provisions on the timing restriction for filing a divisional application are to be amended.

Under the current Patent Act, a request for division shall be filed within any of the following time periods: 1. before a reexamination decision on the original patent application is rendered; or 2. 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.

The Amendment Draft now proposes to extend the time period from thirty days to three months after receipt of an allowance decision after either preliminary examination or re-examination. Besides, it is worth mentioning that such stipulation applies not only to invention patent applications, but also utility model and design patent applications.

Meanwhile, the Amendment Draft to Paragraph 6 of Article 34 of the Patent Act also proposes that after the original patent application has been approved, a request for division shall be based on the invention(s) disclosed in the specification or the drawing(s), but not those claims that have been approved in the original patent application. In case a patent application is in violation of the provision set forth in Paragraph 6 of Article 34 of the Patent Act, a decision of rejection shall be rendered or   any person may request for an invalidation action against the patent with the Taiwan Intellectual Property Office under such circumstance.