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Amendments to partial chapters of Patent Examination Guidelines come in force as of July 14, 2021
E210805Y1.E210714Y1 | Aug. 2021(E261) Back    
 Taiwan IPO gave a public notice of the amendments of the Patent Examination Guidelines (hereinafter referred to as the “Guidelines”), including Chapter 1 to Chapter 6, Chapter 10, Chapter 11, Chapter 13, and Chapter 14 of Volume II: Substantive Examination of Invention Patents, Chapter 1 and Chapter 5 of Volume III: Substantive Examination for Design Patents, Chapter 3 of Volume IV: Substantive Examination for Formality Examination for Utility Model Patents, and Chapter 1 of Volume V: Invalidation Proceedings.  The amendments are summarized as follows.  

1.  Chapter 1 of Volume II:  Description, Claims, Abstract, and Drawings

Section 2.6 is added to provide instructions on examination of the manner in which a claim should be disclosed, which provides that (1) an independent claim shall indicate the designation of the subject matter claimed; (2) a claim that contains such expressions as “characterized in that”, “wherein the improvement comprises”, or any other similar expressions is not necessarily presented in a two-part form; and (3) The corresponding reference sign in parentheses in a claim (for referring to a corresponding technical feature of a claim) does not make the claim unclear.  

2.  Chapter 6 of Volume II:  Amendment 

(1)  The circumstances, under which disclaimer amendment that uses a negative expression to exclude the technical content overlapping with prior art is allowed, are specified: (a) where the disclaimer amendment is to overcome the lack of novelty; (b) where the disclaimer amendment is to overcome the lack of fictitious novelty; (c) where the disclaimer amendment is to overcome the noncompliance with the first-to-file principle but disclaimer amendment is not applicable to the references cited with the same filing date; and (d) where the disclaimer amendment is to exclude “human beings” in claim(s), for the invention claimed contains “human beings” and thus involves interference with public order and good orals.  

(2)  With respect to alteration of the maximum and minimum values in claim(s), the amendments require that both of the following two conditions must be satisfied for alterations to be made:  (i) The range of altered value has been disclosed in the description, claims, or drawings; and (ii) The range of altered value has been included in the range of value disclosed in the description, claims or drawings.  There are also two cases of embodiments provided for clarification.  

3.  Chapter 1 of Volume V:  Invalidation of Patent Rights 

(1)  A new section 3.3.2 with respect to hearings is incorporated.  

(2)  In this Chapter, the principles for dealing with the intention of the court judgment, new grounds and new evidence in invalidation cases are amended where the invalidation cases need to be reexamined by Taiwan IPO after the original dispositions thereof are revoked due to the introduction of new grounds or new evidence during the administrative remedial proceedings.  

4.  Other amendments include (a) minor changes of sequence of sections, (b) changes in the contents of embodiments, (c) changes of wordings for corresponding to the revisions, and (d) corrections for consistency and of clerical errors.  (Released 2021.08.05)