Operational Directions for the Processing of Third-Party Observations on Invention Patent Applications in effect as of September 1, 2020
E200901Y1．E200825Y1 | Sep. 2020（E250）
Taiwan Intellectual Property Office (hereinafter referred to as the “TIPO”) has been committed to pursuing the best patent quality. It is a common and effective practice adopted worldwide to ensure the stability of patent rights by encouraging any third parties’ submissions of prior art pertaining to the patentability of a claimed invention during the laid-open period for 18 months following the earliest effective filing date of any invention patent applications. For implementing Article 39 of the Enforcement Rules of Patent Act and for making the third party observation mechanism in patent examination more integral and complete, TIPO enacted and announced the Operational Directions for the Processing of Third-Party Observations on Invention Patent Applications (hereinafter referred to as the “Operational Directions”) on August 25, 2020, which has came into effect since September 1, 2020. The enactment of the Operational Directions is expected to clearly regulate public participation procedures, and TIPO also provides a convenient access for third parties to submit their observations through its Patent Search System. Moreover, the patent citation information submitted by third parties will be relayed to relevant patent applicants by notification and will also be made available to the public on the Patent Search System. Through this mechanism, the public input in the form of third-party observations will apply most efficiently for enhancement of patenting quality.
The enforcement of the Operational Directions will be favorable and advantageous to patent applicants, the industries, and the TIPO in the following aspects.
1. For patent applicants, they were unable to consult or take reference of third parties’ citation information and to make necessary revisions of their claims before patent approval and thus waste more time and cost in post-grant invalidation actions, due to the fact that 90% out of the yearly 100 third-party patent observations were not made public upon such 90% third parties’ requests. Now, with the enforcement of the Operational Directions, patent applicants will receive notification regarding any third-party submissions on their claimed inventions in a timely manner, which will not only maintain patent applicants’ rights and interests but also elevate the stability of their patents and further facilitate their patent portfolio at home and abroad.
2. The more convenient access and document templates provided by the TIPO will make it easier for interested parties of relevant industries to file observations and prior art for examination purposes. In addition, the rules governing the time frame for third-party submissions are relaxed, which will be favorable to the interested parties in the circumstance where an applicant files both an invention application and a utility model application at the same time; the interested parties may submit their observations or prior art after completion of the formal examination of the utility model patent application, which procedurally would take a little over two months only, without having to wait for the due date of 18-month laid-open period for the invention patent application to do so.
3. For the TIPO, to provide a convenient access to the third-party observation application forms and document templates on the Patent Search System is able to motivate third parties to submit citation information and will in turn assist examiners in getting hold of and gaining an overview of prior art and also decrease the administrative costs possibly to be incurred in subsequent invalidation proceedings.
Generally speaking, the implementation of the Operational Directions will make Taiwan keep pace with international practices, facilitate public participation in patent examination, help patentees maintain the validity of their patents with less economic burden, and ultimately upgrade the quality of patent examination quality in Taiwan. (Released 2020.09.01)