The prevailing Taiwan Patent Act was revised and implemented on November 1, 2019. Recently, there were minor amendments made by Taiwan Intellectual Property Office (TIPO) on the Enforcement Rules of Patent Act to relax the requirements of sequence listing and third-party observations. The revised rules were then published by the Ministry of Economics on June 24, 2020, and enforced on June 26, 2020.
Sequence listing (Rule 17 under Enforcement Rules of Patent Act)
This rule is for the requirements of specification for an invention patent. Basically, a patent specification shall contain the title of invention, technical field, prior art, description content of invention, brief description of drawings, implementation manner and reference numerals; the specification shall be presented in such order heading by their subtitles and paragraph numbering, etc.; if there is any deposit for a biological related invention, its depository, date and number of deposit shall be specified; if the invention contains nucleotide or amino acid sequences, a sequence listing shall be separately stated.
In the past, the sequence listing would have to be submitted in the required format by paper filing. The new rule allows the electronic submission of sequence listing in the form such as TXT file or text-extractable PDF file. If the sequence listing file has met said format requirements, it shall not be counted for excess page fee of the specification.
Third-party observations (Rule 39 under Enforcement Rules of Patent Act)
In Taiwan, the rule for filing third-party observations of a pending patent application was expressly stipulated in 2013. Namely, any person can submit a written opinion (observations), together with the reasons and evidencing document, against the patentability of an invention patent application during its examination proceeding. Prior to the amendment of this rule, the observations could not be filed before an invention application was published. Pursuant to Taiwan Patent Act, an invention application is set to be published after 18 months from its application date or earliest priority date. In recent years, the time period for TIPO to examine an invention patent application has been shortened, and currently, the average time of disposal period is about 14 months. As such, it would not be possible for a third-party to file observations if an invention application has received TIPO’s decision but not yet been published.
In order to encourage the public participation in the examination process and improve the examination quality, it is now possible per the revised rule for a third-party to file the observations while the invention application is still pending. Despite an invention application is still within its 18-month period and has not yet been published, a person skilled in the art or an interested party may learn the technical content of said invention, e.g. from the corresponding foreign application, or the published utility model application of parallel filing (Taiwan has a dual filing system for a same applicant to file both invention and utility model applications at the same time, in which the utility model application will be conducted only by formality examination and could receive an allowance decision within 6 months), and provide valuable opinion to serve as reference material for the examiner’s consideration before a patent is allowed and granted.
