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III
IPR LEGISLATIONS
▓
Patent Examination Guidelines
3
In compliance with the Patent Act
amendment, the following revisions to
the Patent Examination Guidelines were
published on January 15 and 16, which
took effect retrospectively on January 1:
Guidelines on Computer Software-
Related Inventions
Revisions include redefining com-
puter software inventions, stipulating
that specifications for means-plus-
function claims are obliged to have cor-
responding disclosure and must contain
detailed explanation of the conditions
for enablement, adjusting examination
method for determining “simple use of
computer,” and stipulating guidelines
for examining inventive steps when fea-
tures that are not technically helpful are
involved.
Guidelines on Patentability
Amending the first-to-file principle to
govern that Article 32 of the old Patent
Act on selecting one type of rights ap-
plies to applicants filing two applications
for the same creation prior to June 13,
2013. For applicants who filed after June
13, 2013, Article 32 of the revised Patent
Act on continuation of rights applies.
Also, corresponding provisions in Section
1 of Chapter Five of Examination Guide-
lines for Invalidation were also revised
accordingly.
to streamline award volumes, related
provisions in the Regulations Governing
Invention and Creation Awards were
amended and promulgated on March
6 and went into effect retrospectively
from January 1.
Discussion of Patent Grace Pe-
riod
TIPO studied legal regimes and user
feedback from the EU, the US, Japan,
and mainland China, as well as the re-
sults of promoting international harmoni-
zation from WIPO, AIPPI, and Tegernsee
Group to review current grace period
claims in Taiwan. From such, a report on
grace period research was completed.
TIPO held a public hearing on the
issues of grace period, including the du-
ration, procedural requirements, types
of disclosure, as well as the impact of
the disclosure of a third party’s indepen-
dent invention within the grace period.
Most of the participants agreed on ex-
panding the types of disclosure and sug-
gested that subsequent amendment to
the Patent Act should focus on the ob-
jectives of the legal regime and achieve
a balance of rights between patentees
and users.