Taiwan Patent Act stipulates that the specification for an invention patent application should fully disclose the technical means to enable the invention to be realized, and the scope of the patent application should clearly define the claimed invention and be supported by the specification. Generally, after filing a patent application, the Applicant can file voluntary amendments to the specification, claims, or drawings, or file amendments upon receiving notification from the Examiner during the patent examination process.
Under the Taiwan patent examination system, there are “Primary Examination” and “Re-Examination” stages in the prosecution of an invention patent application. To enter the primary examination stage, the Applicant may request simultaneously a substantive examination together with filing the invention application or within three years after the application date. The Taiwan Intellectual Property Office (TIPO) will assign an Examiner to examine the patent application and determine whether it should be granted an invention patent. If the patent application does not meet the requirements, the Examiner shall notify the Applicant to file a response or amendment within a specified period. If, after the response or amendment, there are still grounds (as already notified) for rejection, the Examiner may issue a rejection decision directly.
If the Applicant disagrees with the rejection decision, a Request for Re-examination can be filed within two months upon receipt of the Notice of Rejection along with the re-examination reasons, which may also be submitted within four months. The TIPO will arrange a different Examiner to conduct the prosecution of re-examination. During the primary examination and re-examination procedures, the deadline for filing a Response or Amendments to an Examination Opinion Letter (Office Action, OA) is two months for domestic applicants (extendable to another two months) and three months for foreign applicants (extendable to another three months). Failure to respond within the prescribed time limit will result in the patent application being rejected.
Examination Opinion Letter and Final Examination Opinion
If an invention patent application has been examined and an Examination Opinion Letter (Office Action, OA) is received, the Applicant may submit amendments only within the prescribed notification period. Normally, the TIPO will issue only one Office Action during the primary examination stage or re-examination stage, in order to avoid examination delays and backlogs. In exceptional cases, the Examiner may issue a second OA during the primary` examination or re-examination process, such as if an Examiner has found other prior art references, new rejection grounds, or invoked different legal provisions. Under such circumstances, the Examiner needs to comply with the Administrative Procedure Act (Article 102) by giving the Applicant an opportunity to file a Response before a formal rejection is rendered on the patent application. However, if the Examiner feels necessary, being dissatisfied with the response or amendment made, a Final Examination Opinion may also be issued. In such case, the amendments to the scope of an invention application in a Final OA stage are limited to: deletion of claims, narrowing of claim scope, correction of errors, and clarification of unclear statements.
In practice, when the Applicant submits amendments in response to the first OA during primary or re-examination but is uncertain whether the amendments or patent application will be approved, an Interview request can be filed at the same time. If the Examiner grants the Interview, the Applicant can make further amendments within a specified period as instructed by the Examiner after the Interview, thereby increasing the opportunity for amendments.
The Support of Amendments during the Primary and Re-Examination stages
If the Applicant’s amendments and response are not accepted by the Examiner in the primary examination stage, a formal rejection may be rendered directly. If the amendments and response filed during the re-examination are also not accepted, a Re-examination rejection decision may be rendered. Therefore, the first OA received during the re-examination process could be the last opportunity for the Applicant to submit amendments. After the receipt of a Notice of Re-examination Rejection Decision issued by the TIPO, the Applicant may file an Appeal (with the Appeal Review Committee under the Ministry of Economics, MOEA) within 30 days, but no amendments can be filed during the appeal or subsequent remedies. Since amendments submitted after the decision of re-examination have not been examined by the TIPO, they will not be taken into consideration during the appeal.
Accordingly, the submission of amendments is important during the primary or re-examination stages. When filing the amendments, the Applicant should provide the basis of amendments to facilitate the examination process. All amendments should specify the paragraphs, pages, and lines in the specification that support such amendments. If the Applicant fails to do so, and the Examiner cannot find where such amendments are supported in the specification, or the relations among the specification, claims and the drawings, the patent application may be rejected on grounds that the amendments are not supported by the specification. For amendments filed at different stages, the Examiner will compare the latest amendments with the specification, claims or drawings when filing the patent application, to determine whether the amendments have exceeded the scope disclosed in the original filed application.
Patent Examination Guidelines for Determining Whether the Amendments Introduce New Matter
According to the TIPO patent examination guidelines, the Examiner will examine the amendments to the specification, claims, or drawings, and determine whether they extend beyond the scope of content as originally disclosed. The so-called “scope of content disclosed in the specification, claims, or drawings at the time of filing the patent application” refers to: all matters that are clearly described (explicitly presented) in the specification, claims or drawings on the filing date of the patent application; or the matters that a person ordinary skilled in the art can directly and unambiguously derive from the disclosed content. Accordingly, the amendments are not limited to literal or word-for-word interpretations.
Also, the content disclosed in a priority document is not considered part of the specification, claims or drawings that filed for a Taiwan patent application, and therefore cannot serve as the basis for determining whether an amendment exceeds the scope as disclosed in Taiwan. Matters such as new effects/uses of the invention, new experimental data, new embodiments, or other supplementary information are not regarded as permissible amendments, and they can only serve as references when examining the patentability requirements.
Examination Materials and Approval Documents for Corresponding Foreign Patent Applications
Most foreign Applicants file Taiwan patent applications by claiming priority from corresponding foreign applications. In fact, TIPO Examiners often review the examination status of the foreign applications filed in USPTO, EPO, or JPO, to help align the examination of the Taiwan application with that of the foreign counterparts. Some Examiners may even cite the same prior art references or raise similar issues. Therefore, Applicants can submit responses and amendments with the same or similar content as filed for the corresponding foreign applications, particularly those from the United States, Europe, and Japan. Applicants can also amend the claims in the Taiwan applications to match with the claims already been allowed or granted abroad, thereby increasing the chances of approval in Taiwan.
