Taiwan's draft 2027 patent examination guidelines: trademarks in claims and combined evidence in invalidation

If a claim you file or prosecute in Taiwan names a material or a component by a registered trademark or a trade name, plan to rewrite it in technical terms. That is the practical takeaway from the draft “2027 edition” of the Patent Examination Guidelines that the Taiwan Intellectual Property Office (TIPO) pre-announced on September 7, 2026. The draft is not yet in force; the edition in force since July 1, 2024 still governs.

1. The short answer

Under the draft, a registered trademark, a trade name or similar wording in a claim is listed as an expression that makes the claim unclear. Its use may be allowed only by way of exception, and only when both of two conditions are met: using the term is unavoidable, and the term itself already had a clear technical meaning at the filing date.

The same draft covers invalidation actions in which a combination of prior-art documents includes one that is ineligible or whose admissibility cannot be confirmed: the examiner should preferably first investigate the evidence or ask the requester for supporting proof, and what the requester then adds is limited to related evidence based on the same underlying facts.

My advice to foreign applicants is not to wait for the final text. The wording may still change before it is issued, but acting now costs one round of claim drafting; waiting risks an office action, or later an invalidation argument, that turns on a single word.

2. Where the draft stands

TIPO posted the pre-announcement on September 7, 2026, covering Part II (Substantive Examination of Invention Patents), Chapter 1, and Part V (Invalidation), Chapter 1, and asked for comments by September 25, 2026. The attachments are in Chinese: a summary, a comparison table, and a clean and a redlined text of each chapter, both built on the edition in force since July 1, 2024, with the redlined texts marking the changes.

As of October 18, 2026, TIPO’s patent bulletin board and patent regulation notices list no issued 2027 edition, and its page of current guidelines still offers the Part II and Part V compilations in force since July 1, 2024. The pre-announcement materials give no effective date. To be clear, everything below describes the draft, which may change before it is issued.

The redlining shows three substantive changes: a new item (6) in section 2.4.1.5 of Part II, Chapter 1 (trademarks and trade names); a rewording of section 2.4.1.3.1 (composition ranges); and a rewritten item (6) in section 5.4 of Part V, Chapter 1 (combined evidence). The other marked changes are only table-of-contents page numbers and formatting.

3. Trademarks and trade names in claims

What “clear” means. Under Article 26(2) of the Patent Act, each claim must be stated in a clear and concise manner and be supported by the description. Section 2.4.1 of Part II, Chapter 1 explains that a person ordinarily skilled in the art must be able to understand the meaning of each claim from the claim itself, with no doubt as to its scope; the description, the drawings and common general knowledge at the filing date may be consulted. Section 2.4.1.5 then lists forms of expression that make a claim unclear; the current edition has five, from negative limitations to optional wording such as “preferably”.

What the draft adds. A sixth item, which reads in full:

(6)請求項中使用註冊商標、商品名稱或其他類似文字之記載，例如「商標名稱®」或類似用語。 惟若使用前述記載方式是無法避免的且該等用語本身於申請時已具有明確技術意義，則得以例外允許使用。

Our translation: “(6) Use in a claim of a registered trademark, a trade name or other similar wording, for example ‘Trademark Name®’ or similar terms. However, where using such wording is unavoidable and the term itself already had a clear technical meaning at the time of filing, its use may be allowed by way of exception.”

The comparison table gives the reason: there is no assurance that the material, article or feature such a term denotes will not change as the product is updated.

The example in the draft. The draft’s one example is an actuator whose preload element includes a “Belleville” washer. Although a trade name, the draft explains, the term had by the filing date become a standard descriptive term recognized in the art, with a clear technical meaning (a particular type of spring washer), so its use is allowed by way of exception.

Three situations to tell apart.

• A brand standing in for a material or a part. Picture a claim to an insulated water bottle whose inner coating is “BrandX® coating”. If the brand owner changes the formulation next year, the claim’s scope moves with it. This is the situation the new item describes.
• A brand name that has become the ordinary technical word. The Belleville washer is the model, and both conditions must be met. Whether a given term has reached that point is for the examiner to judge case by case.
• Trademarks in the description. Unchanged. Section 1.4 of the same chapter already says the description should avoid trademarks and trade names to denote materials or articles; where one must be used, state the model, specification, performance and manufacturer so that the enablement requirement is met.

My recommendation is to treat the exception as a narrow safety valve, not as a drafting option. Where a generic technical description exists, it is hard to argue that the trademark was unavoidable.

4. Combined evidence in invalidation actions

An invalidation action may rely on a combination of documents, for example documents 1 and 3 against inventive step. The draft deals with what happens when one of them cannot be used.

The current rule. Under item (6) of section 5.4 in force today, where a combination includes ineligible evidence, the examiner first seeks clarification from the requester, and the combination or issue so confirmed is put to the patentee before the decision. If ineligible evidence remains, patentability is compared on the grounds and the other eligible evidence. A final sentence says that where a document in the combination is ineligible on its face, the evidence is to be investigated first; if supporting or related evidence turns up (for example, a document published after the filing date that also has an earlier publication), the issue may be examined directly.

What the draft changes. In the draft:

• The rule covers evidence whose admissibility cannot be confirmed, as well as ineligible evidence.
• The examiner should preferably first investigate the evidence, or tell the requester to submit supporting proof.
• Evidence the requester then adds is limited to related evidence based on the same underlying facts as the original evidence. The explanatory column says this follows a consultation meeting between TIPO and the Ministry of Economic Affairs’ Department of Legal Affairs.
• If the requester submits new evidence beyond the scope of the clarification and this risks delaying the examination, the examiner may skip sending it to the patentee for a supplementary response and examine on the original combination.
• If ineligible evidence remains after investigation or clarification, patentability is compared on the grounds and the other eligible evidence, as now.

The final sentence on documents ineligible on their face is deleted. The explanatory column says evidence investigation is now in the first sentence, and the examiner’s own investigation of whether a patent grant publication also has a laid-open version is already covered by section 4.3.2.4. That section’s example is a U.S. grant publication dated after the challenged patent’s filing date whose front page shows a pre-grant publication date before that filing date: the examiner is to ask the requester for clarification and investigate on its own motion, and may not treat the document as ineligible on the grant date alone.

The draft also drops the current sentence requiring the confirmed combination or issue to be put to the patentee before the decision; the explanatory column does not comment on this. Section 4.2.2 of the same chapter, which the draft does not change, still says that after a clarification the patentee is to be notified to file a supplementary response where the requester’s additional reasons or evidence do not risk delaying the examination.

What this means for each side. What “the same underlying facts” means is already set out in section 4.3.2.3 of the current chapter: supporting evidence rests on the same underlying facts as the original evidence and strengthens its admissibility or probative value, while new evidence goes beyond the original issue and does not rest on the same underlying facts. Under Article 73(4) of the Patent Act, the requester must file additional reasons or evidence within three months after filing the action; later filings are not examined. After that, a requester notified by TIPO must reply within one month after service, and a late reply is not examined unless an extension has been granted (Art. 74(4)); material beyond the scope of a clarification notice is not examined (section 3.1.2 of the current Part V, Chapter 1). So if you are the requester, build every combination on documents whose dates and authenticity you can prove when you file, and use the three months to add what is needed rather than counting on a clarification notice to reopen the door. If you are the patentee, check the admissibility of each document in each combination; a combination that loses one document may fall apart. For the periods on both sides, see Taiwan patent and trademark deadlines at a glance.

5. A smaller edit: composition ranges

Section 2.4.1.3.1 treats a composition claim as unclear where the upper limit of one component plus the lower limits of the others exceeds 100%. The current text frames this around closed transitional phrases; the draft says it applies whether the phrase is open, closed or semi-open. The comparison table says the change is meant to avoid the misunderstanding that the example applies only to closed phrases. The mirror case, where the totals fall below 100%, stays limited to closed phrases.

6. What to do now

The business consequences are why I would act early. A claim that is not clear under Article 26 is a ground for rejecting the application (Patent Act, Art. 46) and a ground on which anyone may bring an invalidation action against the granted patent (Art. 71). Apart from correcting mistranslations, amendments may not go beyond what the description, claims or drawings disclosed as filed (Art. 43(2)), and after an office action they may be made only within the period TIPO sets (Art. 43(3)). After grant, a post-grant amendment is limited to deleting or narrowing claims, correcting errors or mistranslations, and clarifying ambiguous statements, and may not substantially enlarge or alter the published claims (Art. 67).

Here is what we suggest:

• New filings. Replace trademarks and trade names in the claims with technical terms. In the description, keep the trademark if it helps, but add its model, specification, performance and manufacturer, so that the application as filed says what the trademark stands for; whether a later amendment stays within the original disclosure is decided case by case. Our Taiwan patent filing checklist covers the other items to settle before filing.
• Pending applications. Check the claims of pending Taiwan applications. If a trademark appears, prepare replacement wording now, supported by the description as filed, so that you are not drafting it under time pressure when an office action arrives. For how long each stage takes, see How long does a Taiwan patent or trademark take?
• Granted patents you may enforce. Review claims that rely on a trademark; any correction must stay within the Article 67 limits.

We will update this page when the 2027 edition is issued or its effective date is announced. If you would like your Taiwan claims reviewed against the draft, see our patent services.