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13 March 2015
For invention patent applicants, obtaining patent rights is essential to protect their inventions, and of course, a speedy prosecution is desirable in helping patent applicants achieve IP protection as soon as possible. On the other hand, due to the long examination pendency at the Taiwan Intellectual Property Office (TIPO), TIPO is keen to expedite patent examination by utilizing the search and examination results of the foreign patent offices.
Currently in Taiwan, there are various programs available for invention patent applicants to speed up examinations, i.e., the Accelerated Examination Program (AEP), Patent Prosecution Highway (PPH) and Prioritized Examination (PE).
Requirements
Accelerated Examination Program
As in many other programs for speedy examination, the main reason why the TIPO launched the AEP is to reduce the backlog of patent applications. On January 1, 2009, the TIPO started a one-year trial of the AEP. After the trial, the TIPO formalized and also expanded the AEP by accepting more kinds of eligible invention applications.
To request the Accelerated Examination Program, eligible invention applications must be under one of the following conditions:
i. Taiwan invention patent applications that are under substantive examination in the primary examination or re-examination stage, where the corresponding foreign application has been substantively examined and allowed.
ii. If the examination opinions (and search report, if applicable) of the corresponding foreign application have been issued by the USPTO, JPO or EPO, but the application has not been allowed yet, the Taiwanese counterpart also will be eligible for the AEP.
iii. If the invention claimed in a Taiwanese invention patent application is essential to what the applicant puts to practice for commercial purposes, the Taiwanese application also will be eligible for the AEP.
iv. The applicant whose invention involves ‘green’ technologies may request AEP to ascertain its patentability at the earliest.
PPH programme
The PPH programme enables an invention patent application, whose claims have been determined to be patentable in the Office of Earlier Examination (OEE), the United States Patent and Trademark Office (USTPO), the Japan Patent Office (JPO), or the Spanish Patent and Trade Mark Office (SPTO) to accelerate substantive examination under the PPH in TIPO.
Requirements for requesting accelerating examination under the PPH for an application in Taiwan include:
i. PPH between TIPO and USPTO the TW application is an application which has validly claimed priority right from a USPTO application(s) or from a PCT application(s) with the US as one of the designated states, and the PCT application(s) has(have) not claimed priority right from other application(s); or PPH between TIPO and JPO or SPTO both the TW application on which the PPH is requested and the JP or ES application forming the basis of the PPH request shall have the same earliest priority date or filing date.
ii. at least one corresponding US, JP or ES application has one or more claims that have been determined to be patentable by the USPTO, JPO or SPTO;
iii. all claims on file, as originally filed or as amended, for accelerated examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable in the USPTO, JPO or SPTO; and
iv. the applicant has been notified that a substantive examination will begin shortly, and the TIPO has not issued a first examination report on the application.
Prioritized Examination
The invention patent applicant may also utilize Prioritized Examination to speed up the patent examination. Upon request by the applicant, the TIPO may conduct prioritized examination of the invention patent application if the claimed invention is commercially exploited by a person other than the applicant after the applicant is laid open. To request the Prioritized Examination, relevant documents of proof shall be submitted when filing the request.
Costs
With respect to the costs, for requesting the AEP under conditions iii and iv, the official fee is NT$3,000 (about US$100). For requesting the AEP under conditions i and ii, PPH and PE, no official fee is due.
Effects
In practice, there are not many cases in which the patent applicants use the prioritized examinations to speed up the substantive examination. However, thousands of TW applications on which the AEP or PPH are requested have benefited from such programs. For the cases requesting the foregoing programs, the TIPO will render examination results within six to nine months.
Based on the statistics of the TIPO, the average examination decision period without requesting the AEP or PPH is 43 months for invention patent application in the year of 2012. The statistics until January of 2015 released by the TIPO show that the average examination decision period is from 72.6 to 141.6 days for the cases requesting the AEP (depending on the conditions applied).
Tai E Internationl Patent & Law Office
9th Floor, No. 112, Sec. 2,
Chang-An E. Rd., Taipei 10491,
Taiwan
T: +886 2 25061023
F: +886 2 25068147
E: ipdept@taie.com.tw
