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"Two Applications for the Same Creation" Related Provisions Included in the Amended ROC (Taiwan) Patent Examination Guidelines
The amended Patent Act implemented on June 13, 2013 has amended Article 32 of the Patent Act promulgated on January 1, 2013, which allows the same patent applicant to apply for the invention patent and the new utility model patent for the "same creation" on the same date (hereafter "Two Applications for the Same Creation"). With this change, the previous "Election on Patent Rights" system has been changed to the "Continuation of Patent Rights" system. Revisions for the relevant patent examination guidelines were completed and promulgated by the Intellectual Property Office of the Ministry of Economic Affairs on January 16, 2014, which retroactively took effect on January 1, 2014.
The key points of the revisions are listed as follows:
I. The applicable differences between the "Election on Patent Rights" system and the "Continuation of Patent Rights" system:
The applicable differences between "Election on Patent Rights" and "Continuation of Patent Rights" include:
1. The applicability of "Election on Patent Rights" or "Continuation of Patent Rights" shall be decided based on the date of application:
For patent applications filed for "Two Applications for the Same Creation," if the patent application date is before June 13, 2013 (that is, from January 1, 2013 to June 12, 2013), the "Election on Patent Rights" system provided by Article 32 of the Patent Act prior to the revision shall apply; if the application date is on or after June 13, 2013, the "Two Applications for the Same Creation" system provided by Article 32 of the Patent Act after the revision shall apply.
2. The differences of the applicant's declaration when the applicant applies for "Two Applications for the Same Creation" filed before and after the amended Patent Act took effect:
For patent applications applicable to the "Election on Patent Rights" system before the amended Patent Act took effect:
As long as the invention and new utility model patent applications are (1) filed on the same day and (2) filed by the same person when the patent is filed in Taiwan, there is no need to declare in respective applications that an invention or new model application for the same creation is filed.
For patent applications applicable to the "Continuation of Patent Rights" system after the amended Patent Act took effect:
The invention and the new model patent applications for the same creation should meet the following conditions: (1) they are filed on the same day, (2) they are filed by the same person, and (3) they include declarations separately when the applications are filed. For example, the application forms of respective applications should include declarations such as "The applicant hereby declares that the same creation has been applied for a new utility model patent on the same day on which the subject invention patent application is filed" and "The applicant hereby declares that the same creation has been applied for an invention patent on the same day on which the subject utility model patent application is filed."
3. The differences regarding the interpretation of the provisions of Article 32, Paragraph 3 of the Patent Act, "The patent application for invention shall not be granted if the utility model patent right has become extinguished or has been revoked finally and bindingly before a decision is rendered on the patent application for invention," for "Two Applications for the Same Creation" filed before and after the amended Patent Act took effect:
For patent applications applicable to the "Election on Patent Rights" system before the amended Patent Act took effect:
The invention patent application shall not be granted if the utility model patent right has become extinguished or has been revoked finally and bindingly before a decision is rendered on the invention patent application.
For patent applications applicable to the "Continuation of Patent Rights" system after the amended Patent Act took effect:
The invention patent application shall not be granted if the utility model patent right has become extinguished or has been revoked finally and bindingly before a decision is rendered on the invention patent application and before the publication of the invention patent.
4. The differences between the requirements of "the same applicant" of "Two Applications for the Same Creation":
For patent applications applicable to the "Election on Patent Rights" system before the amended Patent Act took effect:
The "applicant" of "Two Applications for the Same Creation" should be the same person at the following timing:
(1) when the applications are filed in Taiwan; and
(2) when the IPO notifies the patent applicant to make a selection within a specified time period.
For patent applications applicable to the "Continuation of Patent Rights" system after the amended Patent Act took effect:
The "applicant" of "Two Applications for the Same Creation" should be the same person at the following timing:
(1) when the applications are filed in Taiwan;
(2) when the IPO notifies the patent applicant to make a selection within a specified time period; and
(3) during the period from the receipt of allowance decision and the publication of the invention patent.
In addition, during the period from the filing date to the allowance of the invention patent application, in case of patent assignments, the invention and new utility model patent applications shall both be assigned. Should the assignment cause the patent applicants of the invention and new utility model patent applicants to become different, since different applicants cannot proceed with "Election on Patent Rights," the invention patent application shall be examined under the "First-to-file principle." That is, the invention and the new utility model patent applicants must negotiate and select only one from the invention patent and the new utility model patent and submit the negotiation results before the designated deadline; if the other related patent application is withdrawn, abandoned, or corrected, the patent elected by the negotiators should be granted. The IPO will publish the results, announcing that the effect of patent right of said other related patent application shall be deemed not to have existed. If an agreement cannot be reached or an agreement is regarded as not reached because the negotiation report is not submitted within the deadline, all of the relevant patent applications under examination shall be rejected. The IPO will publish the results, announcing that the effect of patent rights of all related patent applications shall be deemed not to have existed (please refer to Section 5.6.2.2 of the amended Patent Examination Guidelines ("amended Guidelines"), entitled "Where the Applicants are different and One of the Applications has been published").
5. The differences of the legal effects resulted from electing invention patent in response to the IPO's notification for "Election on Patent Rights" within the deadline for "Two Applications for the Same Creation":
For patent applications applicable to the "Election on Patent Rights" system before the amended Patent Act took effect, if the invention patent is elected, the new utility model patent right shall be regarded as nonexistent.
For patent applications applicable to the "Continuation of Patent Rights" system after the amended Patent Act took effect, if the invention patent is elected, the new utility model patent right shall be regarded as extinguished from the date of publication of the invention patent.
II. For the "Continuation of Patent Rights" system, the amended Guidelines clearly provide the standard for determining how the invention and new utility model patents relate to the "same creation" before the IPO requires that election on patent rights must be made before the deadline prior to the allowance of the invention patent.
According to the amended Guidelines, the examination principle and judging standard for the "Same Creation" and the way to determine that the invention and new utility model patents filed on the same day relate to the same creation are provided by Section 5.3, entitled "Examination Standard of the First-to-file Principle"; Section 5.4, entitled "Judgment Standard of the First-to-file Principle"; and Section 5.5, entitled "The Way to Determine that the Invention Patents Filed on the Same Day are the Same." Therefore, the examination opinions will be made on the basis of the invention recited in each claim.
III. With respect to the "Continuation of Patent Rights" system, the amended Guidelines stipulate that only one divisional application can quote the "Two Applications for the Same Creation" declaration cited in the original application:
According to the amended Guidelines, if the invention and new utility model patent applications respectively include declarations that they relate to the same creation when they are filed and a divisional invention application covering the same creation is subsequently filed, said divisional invention application can quote the "Two Applications for the Same Creation" declaration cited in the original application. It should be noted that only one divisional application can quote the "Two Applications for the Same Creation" declaration since the legislative purpose of "Continuation of Patent Rights" is to allow the applicant to file one invention patent application and one new utility model patent application covering the same creation in Taiwan on the same day.
IV. With respect to the "Continuation of Patent Rights" system, the amended Guidelines clearly indicate that when the IPO issues an office action to notify the applicant to "make election on patent rights before the deadline," if the IPO has other reasons against the patentability of the application, such reasons should be given in said office action.
V. With respect to the "Continuation of Patent Rights" system, the amended Guidelines clearly stipulate that after the IPO receives the applicant's response to an office action of "making election on patent rights before the deadline," the IPO will make the following conclusions or opinions on a case-by-case basis:
1. If the applicant's response elects the invention application and overcomes other reasons against the patentability of the application, the invention patent shall be granted.
2. If the applicant's response does not make an election on the patent rights but overcomes other reasons against the patentability of the application, the IPO will issue another office action to the applicant regarding "making election on patent rights before the deadline."
3. If the applicant's response fails to overcome the "other reasons against the patentability of the application," the invention patent application should be rejected regardless of whether the applicant had made the election of patent rights.
4. After the IPO notifies the applicant to "make an election on the patent rights before the deadline," if the applicant's elected invention patent fails to overcome other reasons against the patentability of the application, said invention application should be rejected.