Newsletter
IPO PRACTICE ON PATENT FILE REVIEW
The Ministry of Economic Affairs amended its Guidelines for Patent File History Review in June 2004 to regulate the handling by the Intel-lectual Property Office (IPO) of applications from the public to review patent files. To enable the general public to better understand the scope of patent file review, on 27 February 2006, the IPO published its Guidelines for Handling Patent File History Review, with three attached sched-ules setting out in detail the scope of information available for review. The main points of the Guidelines are:
All information made available for review may be photocopied.
The applicant applying for file review should have access to all information previously filed by him.
Any person may review the file of a patent case which has been granted and published. As to the file of a pending patent application, a rejected patent application or an approved but yet published patent application, only the ap-plicant of said patent application or his patent agent is allowed to access the file of the patent application. For any opposition case or can-cellation case, only the parties to the case and their patent agents are allowed to access the file of the case. For an invention patent ap-plication which has been laid open but has not yet been approved through examination, only the applicant of the patent application is al-lowed to access the entire file of the patent application; a third party can only access and/or make photocopies of the specification and drawings of the patent application (in-cluding the amended specification and draw-ings filed within 15 months from the filing date or the priority date).
The IPO may decline to make available their internal case-handling opinion notes, and other matters that, as required by law, has to be kept confidential, such as information re-lating to national defense secrets, or the con-tent of private contracts.
All information that has been laid open or published can be reviewed. Among the documents available for review, official letters issued by the IPO, in principle, can be made available to the public in the format of tran-scripts of such letters. Originals will not be provided. If there is no transcript copy of an official letter, the draft of the letter should be made available. However, if a document re-lating to the substantive examination of a patent case (such as letters giving notice to make amendments or giving notice of the outcome of the examination) is involved, even if there is no transcript copy in the files, the IPO may nonetheless decline to make any format of the document available for review.
If a document sent by a patent applicant or a letter sent by the IPO includes the applicant''s telephone number or ID number, they will be made available only to the applicant; if such document/letter is to be reviewed by a person other than the applicant, such information should be blotted out beforehand to maintain the confidentiality of applicants'' identities.
Letters in response to inquiries from courts, if the content involves a routine administrative reply (such as whether a patent exists and is valid, the status of a patent case, infringement assessment institutions, etc.) can be made available for review.