IP Observer

Amendments to Taiwan’s Patent Act passed their third and final reading in the Legislative Yuan on December 30, 2016, and were promulgated on January 18, 2017, by presidential decree. The amended Patent Act will take effect on May 1, 2017, as decided by the Executive Yuan. These amendments were made in the hope of future Trans-Pacific Partnership (TPP) participation, in an effort to bridge the gap between Taiwan’s legislation and TPP regulations. However, the TPP trade deal is not likely to get off the ground after US President Donald Trump signed an executive order formally withdrawing the US from the TPP trade deal.

The uncertain future of the TPP, however, has not stopped the Taiwan Intellectual Property Office (TIPO) from proceeding with amending laws, including relaxing grace period regulations. TIPO has completed the draft amendments to the Patent Examination Guidelines for the grace period, and held a public hearing on the draft amendments on March 17.

Is it possible for a patent application filed before May 1, 2017 to enjoy the exceptions to lack of novelty and inventive step prescribed in the new provisions?

The new provisions for the grace period, which allow early disclosure of inventions exemption from consideration in terms of lack of novelty and inventive step during the application’s substantive examination, will take effect on May 1, 2017. That is to say, only applications filed on or after May 1 can seek to benefit from the new provisions of Article 22.

According to the new provisions of exceptions to lack of novelty and inventive step, the grace period will be extended to 12 months from the date of disclosure of the invention, in contrast to a previous six-month limitation stipulated under the current (pre-May 1) regulations. The disclosure by the applicant can be either intentional or unintentional, complying with the core spirit of TPP Article 18.38(a). If the provisions for exemption to lack of novelty and inventive step can be applied to the disclosed inventions, the inventions as disclosed will not be taken into account when considering whether or not the claimed invention meets the requirements of novelty and inventive step.

As stated above, the new provisions are only applicable to applications filed on or after May 1.

For patent applications filed before May 1 and whose inventions have been disclosed beyond the 6 month limit, is it possible for this patent application to enjoy the exceptions to lack of novelty and inventive step?

Or is there any way for the applicant to prevent their patent application from being rejected for lack of novelty or inventive step owing to having disclosed their own invention more than six months prior to their application?

Though the new provisions do not apply to a patent application with a filing date earlier than May 1, it may still be possible for such a patent application to enjoy exemption from lack of novelty and inventive step considerations.

The example provided here illustrates how a patent application with a filing date earlier than May 1 may be able to enjoy the longer grace period by means of claiming domestic priority.

In order to facilitate understanding of the following example, the general principle of domestic priority is set out as below.

Domestic priority is generally utilized under the condition that a later application contains modifications to make improvements on the inventions described in an earlier application or to add new subject matter other than that claimed by an earlier application.

If the applicant tries to make improvements to or add subject matter to the earlier application by submitting an amendment to the earlier application, this amendment may not be accepted, as adding new matter in an amendment is not allowed. However, by means of the domestic priority system, a subsequent patent application can be filed and claim the earlier application as its priority so that all the inventions can be coordinated in a single (later) application and protected more comprehensively. In the later application, inventions stated in the earlier application are deemed to have an effective filing date identical to that of the earlier application, while those not stated in the earlier application do not enjoy the benefit of this effective filing date and thus the filing date of the later application is used to determine their patentability.

It should be noted that since domestic priority can’t be claimed by design applications, the illustrative example given here applies only for invention applications and utility model applications..

Example:

July 1, 2016: Ben publicly presented invention X at a forum held by a national university

February 1, 2017: Ben submitted invention application A to TIPO, wherein invention X is stated in the specification, drawings and claims of application A. In addition, invention X, as stated in application A, has not already benefitted from an earlier effective filing date due to a claim of either domestic priority or international priority, and application A isn’t a divisional application of an earlier application, nor has it been converted from an earlier application.

The current (pre-May 1) Patent Act is applicable to application A because the filing date of application A is earlier than May 1, 2017. That is, only a 6-month grace period is to be granted to the inventions stated in application A. Therefore, application A is not eligible for an exemption to lack of novelty and inventive step requirements prescribed in the current Patent Act, because its filing date is more than six months from the date of disclosure of invention X.

It is very likely that, during the progression of the substantive examination, application A will be rejected for lack of novelty simply because Ben himself made invention X public more than six months before the filing date of application A.

However, Ben may still have recourse by means of domestic priority. More specifically, on the effective date of the new provisions, i.e., May 1, Ben can file another invention application (hereinafter referred to as application B) and claim domestic priority based on the earlier application A.

According the provisions, there is no doubt that application A can serve as a basis for domestic priority because on the filing date of application B, application A has not been abandoned, withdrawn or dismissed, application A has not been granted or published in the Patent Gazette and the written decision of patent examination rejecting application A has not become final and binding.

In addition, in the above example, the filing date of application B is May 1, thus the new provisions of exemption to lack of novelty and inventive step requirements are applicable to application B. Accordingly, application B can enjoy exemption from lack of novelty and inventive step requirements prescribed in the new provisions, as its filing date is less than 12 months from the date of disclosure of invention X. In addition, in the new provisions, an applicant applying for a grace period is not required to state the disclosure at the time of the filing of the later application B.

It is important to note, however, that the earlier application (i.e., application A), serving as the basis of domestic priority, will be deemed to have been withdrawn 15 months from its filing date. Therefore, it is advised that all features originally disclosed in the earlier application be included in the later application.

There are some people that think that the illustrative example mentioned above is not feasible. Essentially this is the view that, since the later application claims priority on the earlier application and thus has a priority date based on the earlier application, the later application is not entitled to a right that the earlier application itself doesn’t have. Therefore, invention X should not be allowed to enjoy the benefit of a longer grace period because it was not granted this right in application A.

However, I believe that invention X’s grace period rights should be based on the later, rather than from the earlier, application.

It is for this reason that inventors who make early disclosures are afforded a grace period before they file a patent. More specifically, the grace period provisions provide that if an applicant files a patent application within a certain time after publicizing the invention, the earlier disclosure is not regarded as prior art in the examination of said patent application.

There is no doubt that, in the illustrative example, the filing date of application A exceeds the six-month-limit from the date of disclosure of invention X and accordingly it cannot enjoy exemption from lack of novelty and inventive step requirements, in accordance with the current Patent Act. However, whether the new provisions are applicable to the invention, as stated in application B depends on whether the application B itself meets the requirements prescribed in the new provisions. The fact that application A was not filed within six months of the early disclosure of the invention does not necessarily lead to the conclusion that the new provisions are not applicable to application B. Therefore, in this author’s opinion, since the inventions stated in application B (including invention X) enjoy their own grace period, it is appropriate that the applicant should be afforded another opportunity to regain the right to a grace period and that the early disclosure of invention X should not be regarded as prior art if it meets the requirements described in the new provisions.

Patent applications filed before the amendment to the Patent Act take effect on May 1, and for which the inventions have been disclosed beyond the six month limitation, might be entitled to a longer grace period if they assert domestic priority based on this prior application on or after May 1. As long as the disclosure was by the applicant, either intentionally or unintentionally, and within the 12 month limitation set by the amendments, the disclosure might still be regarded as falling within an exemption from considerations of lack of novelty and inventive step.