1. Applicants for invention patents can submit a sequence listing in an electronic format instead of in written form.
Before the amendments, Article 17.VI of the Enforcement Rules regulated that for an invention patent application that contains one or more nucleotides or amino acids, a sequence listing is a part of the specification and should be submitted in the written form by the applicant as a part of the duty for disclosure.
After the amendments, the applicant is allowed to submit the sequence listing in the electronic formats that are acceptable for TIPO, such as in TXT file or in a copyable PDF file, which releases the applicants from the duty of making a written copy.
2. Anyone can submit a third-party observation before the examination decision is rendered.
To promote public participation and improve examination quality, Article 39 of the Enforcement Rules regulates the mechanism of third-party observation. Before the amendments, it was regulated that a third party can submit a third-party observation after the application is laid open and before the examination decision is rendered. However, in the present examination practice, if an invention application and a utility model application for the same creation are filed simultaneously by the same applicant, before the invention application is laid open, a third party will be able to learn the technical contents of the invention application from the corresponding utility model patent. In such case, if a third party provides evidence proving that this invention application should not be granted, such evidence should also be allowed to be considered in the examination process by TIPO. Thus, this article is amended so that now anyone can submit a third-party observation as long as it is before the examination decision is rendered.
For more detailed information related to the third-party observation for invention patent application, please refer to our following article about the Guidelines for Third-Party Observation published by TIPO.
II. “Guidelines for Processing Third-Party Observations on Patent Applications” was implemented on September 01, 2020
To specify and clarify the third-party observation mechanism for invention patent applications that can help the examiners investigate evidence, improve the stability of the granted patents, and increase public participation of examination, TIPO prescribed “Guidelines for Processing Third-Party Observations on Patent Applications”. The key points of the guidelines are briefly introduced as follows.
1. The guidelines are prescribed to implement the regulation of Article 39 of the Enforcement Rules of the Patent Act and to provide a standard for the third-party observation by which before the examination decision is rendered, anyone except for the applicant of the invention application (hereinafter as “third party”) can submit a statement (hereinafter as “third-party observation”) if he or she deems that the invention shall not be granted.
2. The third party shall submit the third-party observation before the examination decision is rendered for an invention patent application.
3. The third party can submit the third-party observation on the ground that the invention patent application violates the regulations of Article 46 (grounds for decision of rejection) of the Patent Act and shall be rejected.
4. When submitting the third-party observation, the third party shall fill in the standard form for a third-party observation on an invention patent application, indicating the application number of the invention patent application and providing a list of the citing documents, arguments, and the related proving documents.
5. A third-party observation shall be submitted in written form or via the e-filing system of TIPO.
6. For a third-party observation related to an invention patent application with a utility model patent application for the same creation being filed by the same applicant, the indication of the application number of the invention patent application can be replaced by the application number of the published corresponding utility model patent application.
7. After examination, if it is deemed that the third-party observation is not clear, the contents, arguments, or proving documents are obviously not recognizable or unrelated to the application, TIPO may not dispose the third-party observation. The above provisions shall apply when the third-party observation is not submitted in accordance with the regulations, or when the invention patent application has been withdrawn or dismissed, or when the examination decision of the invention patent application has been rendered.
8. After the third-party observation is submitted, TIPO shall notify the applicant of the invention patent application of the submission of the third-party observation.
9. After the third-party observation is submitted, TIPO is not obliged to notify the third party of the disposal of the third-party observation and the examination decision of the invention patent application.
10. The list of the cited documents submitted with the third-party observation will be available on TIPO’s File Wrapper Search System for patent applications after the invention patent application is laid open or published.