BY ALEX C. H. TSUNG

According to Rule 39 of the Enforcement Rules of the Patent Act, after an invention patent application is laid open and before a decision is issued for the application, a third party considering that a patent should not be granted to the application may submit an observation with a reason and evidence to the Taiwan Intellectual Property Office (TIPO). To provide specific guidelines for such third party observations, the TIPO has published a draft of directions for third party observations for invention patent applications. The following are the key points of the draft.

1. To file an observation, the third party should submit the following documents in the formats required by the TIPO: a third party observation form, an evidence list, a reason, and copies of the relevant evidence. The documents may be submitted in writing or through the TIPO’s electronic submission system.
 

2. The TIPO may ignore a third party observation in case that (1) the observation is not specific and clear, (2) the contents, reasons or evidence of the observation cannot be clearly identified or do not relate to the patent application, (3) the observation is not filed in accordance with the TIPO’s directions, or (4) the patent application has been withdrawn or dismissed or a decision has been issued for the patent application.

3. If a third party observation is filed, the TIPO should inform the applicant of the patent application of the filing of the observation after the patent application enters the substantive examination stage.

4. After a third party observation is filed, the TIPO does not have to inform the third party of the handling of the observation and the examination result of the patent application.

5. The evidence list submitted with a third party observation will be published in the patent public information search system of the TIPO.

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