In Taiwan, the filing of a third-party submission for a pending patent application was initially implemented in January 2013 per Rule 39 under the Enforcement Rules of Taiwan Patent Act, and restricted to an invention application after laid open (18 months from its filing date or priority date). There were other complications, such as patent applicants were not informed of the third-party submission, and the content would be kept confidential upon request by the submitter.
Recently, restrictions for filing third-party submissions on laid-open invention applications has been relaxed after Rule 39 was revised in June 2020. In addition, the operational directions governing the filing of third-party submissions were published in August 2020 and enforced from September 1, 2020. Highlights of said operational directions with further explanations of third-party submissions are as follows:
- Third-party submissions shall be filed any time before TIPO has rendered a decision of primary examination or re-examination on an invention patent application.
- The reasons for third-party submissions shall be based on the grounds of refusal on the grant of a patent, in accordance with Article 46 of Patent Act. For example, third-party submissions may be filed on the ground of not meeting the requirements of definition of invention; novelty, inventive step or industrial applicability; first-to-file principle; non-patentable subject matter; insufficiency of disclosure; double patenting; unity of invention; addition of new matter after filing the amendment, division or conversion, and so on.
- A written application shall be filed by stating the application number and accompanied by a list of cited references, statement of reasons, together with relevant documentation as proof. For a third-party submission against an invention application filed simultaneously with a utility model application under the dual filing system, the submission can state the application number of corresponding utility model application after being published (before the laid-open of said invention application).
- The above submission must state the submitter’s personal details, including name and address. In other words, the application cannot be filed anonymously. However, TIPO will not disclose said details without the submitter’s consent.
- A third-party submission will not be handled by TIPO if it lacks specificity and has no substantive content, or does not relate to the invention application. Also, TIPO will not notify the third party about the processing progress of said submission, or the examination results of said invention application.
- Whether a request of substantive examination has been filed for an invention application, TIPO shall notify the patent applicant about the filing of third-party submission. The applicant can file a request to review the substantive content of said third-party submission. If the applicant disagrees with said submission, a written opinion can be filed to the TIPO as a reference for examination.
- The list of cited references by a third-party submission will be published in TIPO’s patent search system when the said invention application has been laid-open or published upon grant of patent. If necessary, a request can be filed with TIPO to review the complete content of said submission.
