TIPO Introduces Startup Prioritized Examination Pilot Program
The Taiwan Intellectual Property Office will initiate a new examination program dedicated to encouraging the development of startup enterprises. The program, which has a planned launch date of January 1, 2021, will run for 30 tentative cases during the first half of that year. Aiming to accelerate allowability and grant of invention patent applications for startup companies, the program seeks to prioritize their applications and voluntarily offer a guided interview. TIPO hopes to shorten the examination timeframe by advising startup applicants of any cited rejections as well as the possible solutions provided by the proper amendments tailored to each case.
Enterprises which have been incorporated under the relevant corporate law of Taiwan or a foreign country five (5) years prior patent filing date are eligible for the pilot program. If a priority date is claimed for an invention patent application, the time period of incorporation will be calculated from the priority date. The program is available when the startup company is both the invention patent applicant at record at the time of filing and the time to request for entering this pilot program. A foreign startup applicant shall submit a certificate of incorporation or a similar document along with a Chinese translation text for the same, in order to provide proof of the exact date of incorporation. Executed affidavits to attest credibility are required in instances in which the original copies are not submitted. .
An interested startup applicant may request to take part in the pilot program during the time after TIPO’s notice of starting substantive examination and before the first office action is received. Within a month of the applicant’s request, TIPO will proactively offer an invitation to interview the applicant, which will include an examination summary including a search report against novelty, inventiveness, and other potential grounds for rejection. Within the next month after TIPO’s invitation, TIPO will schedule a guided interview. Different from the interview methods which have been traditionally employed, a guided interview involves the examiner explaining to the applicant not only the rejections and objections but also the available solutions to overcome them by making appropriate revisions. However, such a guided interview does not guarantee that the examiner’s advice will necessarily lead to an optimal outcome for the applicant in a commercial situation. As such, the best-tuned balance between patenting an invention in law and maximizing one’s business interest can be achieved by using one’s own judgement as opposed to closely following the advice given in an interview.
If the applicant duly makes a response and/or an amendment within a month after the guided interview, generally the TIPO will issue a notice of allowability (or yet another office action). In absence of the applicant’s response beyond a month after the interview, the application will be removed from prioritized pipeline and then switched to regular examination. As an alternative the applicant can opt to withdraw the application, and possibly thereby affording protection for the invention as a trade secret instead.
The program itself is free of any official charges. Furthermore, just like a regular application, a refund of substantive examination fee is not available if the application is withdrawn after the time of TIPO’s office action.
The pilot program will run on a first-come-first-served basis for 30 applications. Once the 30 seats are filled up, TIPO will publicly announce the later filed applications which could not be entered into the program. TIPO has emphasized that it will consistently review the efficacy of the pilot program, which is an important factor in determining whether or not to retain it and use it on a permanent basis. |