BY MENG-HSUEH KU

Portions of the Patent Examination Guidelines (hereinafter “the Guidelines”) have been reviewed and revised in order to reflect the most recent needs in examination practice, ensure consistency and improve examination quality.

The following content focuses on revisions related to an invention application and a utility model patent for the same creation.

Revisions to Part 2, Chapter 3 “Patentability”

In Chapter 3, Section 5.7.2 “Notes for Examination” of the Guidelines, “with respect to an invention application and a utility model patent for the same creation, Points (5) and (6) are newly added to clarify the principles for examination for the invention application in the case that a decision invalidating the utility model patent in a utility model invalidation action has been made but is not final and binding while the invention application is still under examination or has been approved but not yet officially published.”²

Specifically, the following content has been added to Section 5.7.2:

“(5) During examination of an invention application for the same creation as a utility model patent, if a decision invalidating the utility model patent in a utility model invalidation action has been made but has not yet become final and binding, the same consideration in making such a decision should be applied to the invention application. In principle, the examination of the invention application should continue after an administrative remedy for the utility model invalidation action is final and binding. However, depending on circumstances of the individual case (e.g., there is sufficient evidence to consider the invention application to be unpatentable) or if there is a change in circumstances of the invention application (e.g., the applicant has amended the claims in such a manner that the invention application can no longer be considered to be the same creation as the utility model patent), the examiner may examine the invention application based on the evidence presented in the utility model invalidation action.”³

“(6) After an invention application for the same creation as a utility model patent is approved but before its invention patent is published, if a decision invalidating the utility model patent in a utility model invalidation action has been made but has not yet become final and binding, the same consideration in making such a decision should be applied to the invention application. The examiner then should withdraw the approval decision for the invention application and conduct another examination. The principles for examination shall be the same as described in the preceding paragraph.”⁴

¹ Revisions to the Patent Examination Guidelines
https://www.tipo.gov.tw/tw/cp-85-910484-c6f3d-1.html

² Key Points for Revisions (page 1, “5.7.2 Notes for Examination”)
https://www.tipo.gov.tw/tw/dl-282403-659eb2e72a264344b1c1556555a8e830.html

³ Comparison Table for Revisions (page 1, “5.7.2 Notes for Examination”)
https://www.tipo.gov.tw/tw/dl-282404-2d1e79a52bbe43e7bb092792c541fc6f.html

⁴ Comparison Table for Revisions (pages 1-2, “5.7.2 Notes for Examination”)
https://www.tipo.gov.tw/tw/dl-282404-2d1e79a52bbe43e7bb092792c541fc6f.html 

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