Electronic Exchange of Priority Documents for Design Patents Between Taiwan and Korea

The service of electronic priority document exchange between the Taiwan Intellectual Property Office (TIPO) and the Korean Intellectual Property Office was extended to design patents on July 1, 2023. This service not only simplifies transnational filing procedures and saves time and costs for sending paper documents, but also accelerates patent examination procedures.

Amendments to the Regulations Governing the Determination of Patent Term Extension

The amendments allow the TIPO to calculate periods of domestic and foreign clinical trials for patent term extension based on data confirmed by the Taiwan Food and Drug Administration (TFDA) during the regulatory registration of marketing approvals without the need for additional consultation with the TFDA.

Amendments to the Patent Examination Guidelines

The amendments to the Patent Examination Guidelines mainly involve the following issues.

•The principle whether a prior art described in the specification can be cited as a citation against the patentabilities.

•The limitation of the continuation of patent rights for an invention patent application and a utility model patent application directed to the same creation with a divisional application filed from the invention patent application.

•The timing and limitation of filing a divisional application from a patent application which serves as the basis of a domestic priority claim of a subsequent application.

•The requirement for filing divisional applications when the specifications of the divisional applications are not identical to their original applications.

•The legal basis of marketing approvals of drugs based on which patent term extension can be requested.

•The documents of proof for calculating the periods of domestic and foreign clinical trials for patent term extension (in line with the amendments to the Regulations Governing the Determination of Patent Term Extension mentioned above).

•The regulations about sequence listings in view of the requirements of WIPO Standard ST.26.

• The principle of ne bis in idem for an invalidation action filed against a claim containing a reference to multiple claims.

For further explanation about the amendments to the Patent Examination Guidelines, please see the news previously reported on our website:/en/news.php?act=view&no=29

(Translated and summarized from the news announced on the website of the TIPO)

*Section Chief of International Patent Division at Tai E International Patent & Law Office