萬國法律事務所

Taiwan’s Intellectual Property Office (TIPO) has announced that in the near future, it will make certain amendments to the current Patent Examination Guidelines. Two of the amendments may have a significant effect on the future examination of patent invalidation cases: one is the adoption of a “claim-by-claim” examination approach; the other is the establishment of investigation ex officio during the examination procedure.

According to TIPO, with respect to the first amendment, current practice only allows a “win all, lose all” approach in the decision of each patent invalidation cases. That is, when looking at a number of claims in a patent invalidation request, TIPO will reject the entire invalidation request if one or more claims is not sustained, although other claims may be sustained. By adopting the “claim-by-claim” examination approach, the decision of a patent invalidation examination may be based on each individual claim, so that the IPO may issue decisions that partially sustain patent invalidation requests.

Regarding the second amendment, by granting itself ex officio capacity in the investigation of relevant issues in the examination procedure, TIPO will be able to include evidence that is apparent or well known as a basis for its conclusion, even though the party making the request has not submitted such evidence. Also, TIPO will gradually establish an "examination progress" mechanism, regulating the submission schedule of relevant materials for patent examinations.