BY ALEX C. H. TSUNG

According to Article 115 of the Patent Act, after a utility model patent is published, any person may file a request with the Intellectual Property Office (TIPO) for a technical evaluation report for the patent and the TIPO should issue a technical evaluation report in response. To provide clear directions for technical evaluation reports, the TIPO has included new Chapter 3 “Technical Evaluation Reports for Utility Model Patents” in Volume IV “Examination of Utility Models” of the Patent Examination Guidelines and the new chapter became effective from August 1, 2020.

Comparing the new chapter of the Patent Examination Guidelines with previous practices, an important change is about the condition when the examiner should issue a “notification of technical evaluation report references” and provide the patentee with a chance to submit an explanation before the examiner issues a technical evaluation report.
 

In previous practices, after comparing each one of the claims of the concerned patent with the disclosures in one or more references, the examiner needed to issue a notification of technical evaluation report references only when the creations in all claims of the concerned patent did not meet the patentability requirements. In new Chapter 3 of Volume IV of the Patent Examination Guidelines, it is now stipulated that if the examiner considers that the creation of any one of the claims of the concerned patent does not meet the patentability requirements, the examiner should always issue a notification of technical evaluation report references.
 

Therefore, based on the new practice, the patentee will always have a chance to submit an explanation before the examiner issues a technical evaluation report for the concerned patent if the examiner considers a claim of the concerned patent does not meet the patentability requirements in view of one or more references.

(Translated and summarized from the News and the attachment announced on the website of the Taiwan Intellectual Property Office)