TIPO Moves to Amend Patent Act

12 November 2012

As part of its move to amend Taiwan’s Patent Act, the Taiwan Intellectual Property Office (TIPO) has held several public hearings to collect comments about the amendment. Jaw-Hwa International Patent & Trademark & Law Offices in Taipei says the top changes in the amendment include changes to Article 25 governing the language used for specifications, claims and drawings submitted to TIPO: “Where the specification, claims and all necessary drawings submitted under the preceding Paragraph are written in a foreign language but not in Chinese when filing, and the Chinese translation thereof has been supplemented prior to the date specified by the Patent Authority, the date on which the foreign language version of such documents are submitted shall be regarded as the filing date of such patent application. Failure to submit the Chinese translation thereof by or on the specified date shall cause the patent application to be dismissed provided, however, that if the Chinese translation has been supplemented prior to the execution of the dismissal, the date on which the Chinese translation is submitted shall be regarded as the filing date. The foreign language version will be deemed never submitted. The rules about the “foreign language version” shall be prescribed by the Competent Authority.”

At present, Jaw-Hwa lawyers say, applicants are allowed to submit the specification and all necessary drawings in any foreign languages in order to obtain a filing date. However, they say, since this will cause trouble for the examiners when they need to check whether the amendment of the corresponding Chinese translation thereof exceeds the scope of the specification in a foreign language, TIPO is going to restrict the kinds of foreign languages of the specifications to certain ones in view of that many countries, such as Japan, also make restriction on the kinds of foreign languages.

Jaw-Hwa lawyers also say the ‘specification’ mentioned in current articles of the Patent Act includes ‘specification, claims and abstract.’ “In the amendment, ‘claims’ and ‘abstract’ are separated from the ‘specification’ in order to avoid confusion and to comply with the international trend,” they say.

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