Question 51. If a parent application was filed in 2007, and a corresponding Continuation-in-Part application was filed in 2008, whether the subject matter of the two applications can be combined to file one application in Taiwan and, at the same time, claiming priority to both priority applications, or would the applicant have to file two separate applications in Taiwan based on the two separate parent and CIP applications?

Answer: As long as in view of the filing date of the parent application, it is still within the priority period, we could claim both priorities for a combined application here. . 

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Question 52. What is the latest time during prosecution that a divisional application can be filed? For example, can a divisional application be filed after the allowance of a parent case? As a further example, can a divisional application be filed after payment of an issue fee but prior to the issuance of the parent application? Does your country provide an issue notification like it is currently done in the U.S. Please provide the "hard date" for the filing of a divisional application.

Answer: It is possible to file further divisional application(s) before receiving the notice(s) of allowance for the corresponding parent application(s). Further, if there is/are a pending divisional application(s), even if the parent (divisional) application has been granted and/or issued, it is still possible to file a further divisional application(s) based on the pending divisional application.

If all applications for the family have been accepted, i.e. all of their notice(s) of allowance had or have been received, there will be no way to file any further divisional applications. In addition, after paying the issue fee and the first annuity, the IPO will directly issue the Patent publication with the Patent Certificate without an issue notification like it is currently done in the U.S. The hard date for the filing of a divisional application will be the date by which we receive the notice of allowance for the last application for the family. There is no way to locate when a notice of allowance will be received.

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Question 53. Can the new claims for the divisional application be filed after the divisional application is filed? Is it possible to file a "placeholder" divisional application with the same claims as the parent application, in order to provoke a double patenting rejection (and to avoid a first Office Action allowance). The new claims would then be supplied in response to the Office Action.

Answer: It is appropriate and necessary for a placeholder divisional application to supplement the new Claims within six months from the divisional filing date. It is however theoretically impermissible to file such divisional application with the same Claims as the parent (divisional) application since the procedural examiner will find it out very shortly (not more than one month). In some situation, e.g. the client needs a few more time to prepare the new Claim set, we could try to follow this route.

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Question 54. Is there a limit on the number of divisional applications that can be filed?

Answer: There is no limit on the number of divisional applications that can be filed. 

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Question 55. Are extensions to office actions allowed? If so, how many extensions are allowed and how much time does each extension provide?

Answer: Extensions to office actions are allowed. According to the patent practices, the response deadline designated/prescribed/ruled by the IPO is six-month at maximum. That is, it will be possible for us to have the one-, two- or three-month extension until the maximum six-month period is reached if the original three-month period is expired.

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Question 56. What is the cost of requesting an extension to an office action in your country?

Answer: For requesting an extension to an office action in our country, our service fees will be generally NT$2,000 per time without any official fees.

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Question 57. Do we need to request the extension of time prior to the response due date (i.e., make a separate, specific request for an extension of time), or can the extension be paid for when the response is filed?

Answer: It will be necessary for us to request the extension of time prior to the response due date (i.e., make a separate, specific request for an extension of time).

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Question 58. After filing an application, when may claim amendments be filed? Are amendments to the claims permitted before the application is examined? If so, when is the latest time in which preliminary amendments are allowed to be made?

Answer: After filing an application, voluntary amendments (e.g. Claims) to the application may be made at any time within fifteen months from the filing date of the earliest priority application or upon requesting for the Substantive Examination.

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Question 59. If preliminary amendments are allowed but the time to make these amendments has passed, are amendments to the claims permitted at any other time? If so, when?

Answer: If the time to make the amendments has passed, amendments to the claims are permitted when responding to the possible official letter or office action(s).

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Question 60. Does the examiner have to accept the claim amendments or is the entry of the claim amendments at the discretion of the examiner?

Answer: The claim amendments are at the discretion of the examiner. Nevertheless, as long as there is no new matter involved in, the examiner has no legal stand to negate the entry of Claim amendments.

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