[Taiwan] Operational direction for processing Third-Party Observation released
2020-09-18
On August 25, 2020, the Taiwan Intellectual Property Office (TIPO) released the ”Operational Directions for the Processing of Third-Party Observations on Patent Applications”. These are designed to implement the amended provisions of Article 39 of the Enforcement Rules of the Patent Act and improve the system of third-party observations in order to encourage participation of public to the patent examination process. (original article)
The new directions indicate the requirements and information for submitting a third-party observation:
The new directions indicate the requirements and information for submitting a third-party observation:
Time to process
Any third party can submit their observation from the publication** of a patent application until a decision is issued thereto.
**Where an invention is filed as patent application for both Invention Patent and Utility Models, the third party could submit their observation to the Invention Patent application upon the publication of its corresponding Utility Model application (which takes approximately 1 to 2 months), even the Invention Patent application is not published.
This indicates that inclusion of partial designs or designs of a part of a product in the protection scope of design patent.
**Where an invention is filed as patent application for both Invention Patent and Utility Models, the third party could submit their observation to the Invention Patent application upon the publication of its corresponding Utility Model application (which takes approximately 1 to 2 months), even the Invention Patent application is not published.
This indicates that inclusion of partial designs or designs of a part of a product in the protection scope of design patent.
Requirements of submission
Any third party can submit their observation on patentability of a patent application if they believe the patent application violates the Patent Act and is not patentable.
Required documents for submission
- Application form
- Information of submitter (disclosed, only for the TIPO’s use)
- List of cited documents
- Written observation
- Relevant proofs of lacking patentability (if any)
- Information of submitter (disclosed, only for the TIPO’s use)
- List of cited documents
- Written observation
- Relevant proofs of lacking patentability (if any)
Method of submission
The observation can be submitted in paper form or by electronic filing system.
Furthermore, the directions also illustrate the processing principles and policies employed by the TIPO regarding the third-party observation:
- After receiving the observation, the TIPO shall inform the applicant of subjected patent application of the fact of receiving observation. The applicant may file a request to retrieve the observation.
- List of cited documents adduced in the submission will be published on the Taiwan Patent online database for public’s use and reference.
- The Examiner has no responsibility to inform the submitter of the progress of examination nor the decision of examination in the application. Nonetheless, the submitter or any other third party could check the progress of examination through the Taiwan Patent online database.
