[Taiwan] Regulations and Requirements for Amendment of Patent Application

[ September 25, 2024 ] >Back
TIPO Publishes English Version of Patent Examination Guidelines, Part II, Chapter 6. These points outline the essential rules for making amendments during the patent examination process. Here are the key points:

Timing for Amendments:
  • Patent Application: Amendments can be made after entering substantive examination and before an office action is issued. After receiving an office action, amendments must be made within a specified time period set in the notice.
  • Reexamination Applied: Amendments may still be made. Upon receiving a reexamination office action, amendments must be made within a specified time period set in the notice.
Scope of Amendments:
  • Amendments must not extend beyond the scope of the original disclosure (description, claims, or drawings). No new subject matter can be introduced. The content of amendments should be clear and directly derivable from the original filing.
Documents for Amendments:
  • When submitting amendments, applicants must file a request form and include marked-up versions of the changes, and replacement sheets without markings.
Items of Amendments
  • Applicants can amend the description, claims, abstract and drawings, provided that the amendments comply with the regulations outlined in the Patent Examination Guidelines. These amendments must stay within the scope of the original disclosure and not introduce new matters.

Detailed regulations for amendments can be accessed at: https://www.tipo.gov.tw/en/cp-282-977631-10c63-2.html. TIPO also provides exemplary cases for reference.