Patent Amendments ©(Part II of II)

Taiwan IP Updates

By Lyndon

Revisions to the Design Examination Benchmark

The Taiwan Intellectual Property Office has decided to adjust the current design examination benchmark in several areas and the changes will be effective from November 1^st 2020. Firstly, any part of a design that is not illustrated in the drawing shall be deemed as non-claimed. Omission of acertain elevational view will be allowable when two plan views are mirror-imaged or symmetrical. When the appearance of an omitted view is evident from the other views, it would also fit the omission of a certain view. However, the applicant will need to specifically mention the reasons for such an omission in order for the omitted view to be deemed part of the design. If a plan view is omitted for any other reason, the omitted plan view will be deemed as the non-claimed portion of the design. A sufficient number of views will still be necessary to avoid rejection for not fulfilling the sufficiency of disclosure rule. Secondly, a divisional application will now be allowed for any design which is supported by and does not go beyond the original design application. For example, a divisional application for a component illustrated in the drawing of the original design application will be allowed. Also, a divisional application claiming a scope different from that of the original design if it has full support from the disclosure of the original design application will be acceptable. Thirdly, the articles to which a graphic image design can be applied will be extended to include projectors and virtual reality technology. Thus, graphic image designs will be redefined as two-dimensional or three-dimensional virtual graphics which are generated by computer software to be displayed or projected through a range of devices. By including the reference to computer software in the graphic image design application, broader protections against infringers who are likely to be software producers will be achieved. With these adjustments to the design examination rules, TIPO has successfully kept pace with the IP issues of recent emerging technologies.

Third-Party Observations – TIPO Updates Procedures

As of September 2020, examiners in Taiwan will be working under revised directions for third-party observations. Firstly, when filing a submission for third party observations against an invention application, a third party can no longer ask that the observations and supporting prior art be kept confidential. Secondly, the onus is on the third party to list the prior art and mark the texts of the prior art so as to identify the relevancy between the concerned invention and the prior art. The list of the prior art will be made available for public inspection after the application is laid-open. The revised directions stipulate the format of third-party observations which will make the job of the examiners go more smoothly. Finally, the applicant now needs to ask for a review of the relevant prior art references or observations filed by a third party. TIPO will, however, give a notification to the applicant when a submission for third-party observations has been filed. Previously, third parties were allowed the option of keeping their identity and the submitted prior art secret. Combined with the fact that there was not a standard format for drafting the observations meant that examiners and applicants faced unnecessary obstacles and delays to the work process. The Patent Office expects the new rules to help the applicant stay informed in a timely manner about any third-party observations relevant to their invention.

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