Deep & Far Newsletter 2021 ©
Taiwan IP – Latest Developments
TIPO Revises Pharmaceutical-Related Examination Guidelines
Some clarification about what can be patentable or not in the pharmaceutical field has now been determined by TIPO after comparing issues and cases from Japan, the U.K. and Europe. Firstly, an invention cannot be patented when the method directs to a living human or animal system, relates to a disease diagnosis or aims to obtain a diagnosis immediately. However, if a method does not aim at a diagnosis immediately, but is focused on collecting data such as blood pressure measurement, CT imaging and so on, then it is eligible for a patent. Secondly, methods which possess both therapeutic and non-therapeutic effects that are not separable are methods for treatment that are considered non-patentable. If the effects are separable and the patent claim is limited to benon-treatment in nature, then the claimed method is patentable. These new rules mean that cosmetic surgery and beauty treatment inventions might have an easier path to getting a patent, but essential therapeutic inventions will remain non-patentable.
Taiwan Intellectual Property Office Clarifies Disclaimer Issue
If an amendment or post-grant amendment has a disclaimer, it can only be made to exclude a part that overlaps with a single prior art or to exclude a statutory non-patentable subject matter. Some examples of prior art could be a citation that may prove that a claim is not novel, or a citation that may prove that a claim lacks novelty based on legal fiction, or a citation that may prove a claim violates the first-to-file principle. Also, an exclusionary amendment can be made to exclude a part involving humans from an article claim or a step implemented on living humans or animals from a method claim. TIPO believes that this new regulation will help applicants when filing their claims.