BY TOMMY C. C. TSAI

The amended Patent Act became effective on November 1, 2019. Regarding post-allowance division, in the past, a request for division was only allowed to be filed within 30 days after the date on which an approval decision for the original patent application is rendered, if the parent application was allowed at the preliminary examination stage. According to the amended Patent Act however, a request for division can be filed within three months after the date on which an approval decision for the original patent application or reexamination is served, no matter whether the parent invention application was allowed at the preliminary examination stage or at the reexamination stage. Similarly, a utility model divisional patent application can be filed within three months after the date on which an approval decision for the original patent application or reexamination is served. However, a divisional patent application still cannot be filed if a decision of rejection is rendered for an invention patent application at the reexamination stage, or a written decision rejecting a utility model patent application is rendered.

Further, the content of Paragraph 1 of Rule 29 of the Enforcement Rules of the Patent Act of the previous version was incorporated into the amended Patent Act as the forepart of Paragraph 6 of Article 34 of the amended Patent Act, which prescribes “For the divisional patent application filed in accordance with Subparagraph 2 of Paragraph 2, it shall be based on the invention(s) disclosed in the description or the drawing(s), but shall not be the same as that have been approved in the original patent application.” In addition, the content of Paragraph 2 of Rule 29 of the Enforcement Rules of the Patent Act of the previous version was also incorporated into the amended Patent Act as Paragraph 7 of Article 34 of the amended Patent, which prescribes, “The description, claim(s), or drawing(s) of the original patent application that have been approved may not be altered and shall be published based on the claim(s) and drawing(s) as originally approved.”
 

In case of a violation of the forepart of Paragraph 6 of Article 34 of the amended Patent Act, a decision of rejection shall be rendered or an invalidation action may be filed. Based on the foregoing, if an applicant intends to file a post-allowance divisional patent application including the same claims as the allowed claims of the original patent application, even if the applicant plans not to pay the patent certificate fee and the first-year annuity to avoid publication of the original patent application so there will no double patenting issue, the divisional patent application will still be rejected due to violation of the forepart of Paragraph 6 of Article 34 of the amended Patent Act.