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27 January 2020
Before the amended Patent Act took effect on 1 November 2019, a request for post-allowance division could be filed within 30 days of receiving an allowance decision only if the parent invention application had been allowed at the first examination stage.
Under the amended Patent Act, a request for division may be filed within three months of receiving an allowance decision irrespective of whether the parent invention application has been allowed at the first examination or re-examination stages. Likewise, a utility model divisional application can be filed within three months of receiving an allowance decision. However, divisional applications still cannot be filed after an invention patent application has been rejected at the re-examination stage or if a utility model application is rejected.
Further, Article 29(1) of the Enforcement Rules under the previous Patent Act has been incorporated into the amended Patent Act as the forepart of Article 34(6):
For a divisional patent application filed in accordance with Item 2 of Paragraph 2, it shall be based on the invention(s) disclosed in the description or the drawing(s), but shall not be the same as that which had been approved in the original patent application.
In addition, Article 29(2) of the Enforcement Rules under the previous Patent Act has been incorporated into the amended Patent Act as Article 34(7): "The description, claim(s), or drawing(s) of the original patent application that have already been approved may not be altered."
A violation of the forepart of Article 34(6) of the amended Patent Act has been listed as one of the reasons for which a patent should not be granted or a cancellation action can be raised. Based on the above, if an applicant wishes to file a post-allowance divisional application whose claims include the same claims as the allowed claims of the parent claims, even if the applicant plans to abandon the parent application by not paying the issue fee, such that the parent application will not be published and there will be no double patenting issues, the divisional application will still be rejected for violating the forepart of Article 34(6) of the amended Patent Act.
For further information on this topic please contact David C L Chen at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email (email@example.com). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.
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