In order to improve the efficiency of examination in response to the practical needs of patent examination, the Taiwan Intellectual Property Office (TIPO) recently announced draft amendments to Rules 17 and 28 of the Enforcement Rules of the Patent Act. The main points of the draft amendment are summarized below:

1. When biological material has been deposited in a foreign depository recognized by the Specific Patent Agency, an applicant for a patent application shall submit a certification of deposit issued by the foreign depository, wherein the certification shall include a viability report for the biological material. (Amendment to Rule 17 of the Enforcement Rules of the Patent Act)

2. If the disclosures of the descriptions for a divisional application do not fully correspond to the disclosures of the descriptions for the original application, a marked copy indicating a difference between the descriptions for the divisional application and the descriptions for the original application must be provided when submitting the divisional application. (Amendment to Rule 28 of the Enforcement Rules of the Patent Act)

Further explanations for these two points are provided below.

1. The amendment to Rule 17 of the Enforcement Rules of the Patent Act refers to the rules and regulations regarding the International Depository Authority in the Budapest Treaty requiring that certifications of deposit and viability be combined. In other words, the certificate indicated in the amended rules includes both the "certification of deposit" and the "certification of viability." In current practice, the foreign depositories mutually recognized with the TIPO are international depositories that are recognized by the Budapest Treaty, and certifications of deposit issued by such foreign depositories also include a viability report for biological material. In the future, if a depository mutually recognized with the TIPO is not a depository recognized by the Budapest Treaty, certifications issued by such depository should include both a certification of deposit and a viability report for biological material.

2. With regard to the amendment to Rule 28 of the Enforcement Rules of the Patent Act, during examination of a divisional application, when the content of the descriptions for the divisional application is different from the original application, it must be carefully determined whether the descriptions for the divisional application exceed the scope disclosed in the original application. In order to improve the efficiency of examination, it is stipulated that when filing a divisional application, a copy of marked pages indicating a difference between the descriptions for the divisional application and the descriptions for the original application must be filed, and the difference shall be explained in a request for the divisional application.

(Translated based on News published on the TIPO’s website)

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