Patent

TIPO Devotes Every Effort to Cut Patent Backlog

As of December 2009, there were more than 140,000 patent applications pending the TIPO’s preliminary examination despite the Office’s growing closing rate. The pendency for an invention application is on average 33.75 months, according to the TIPO’s statistics. Owing to the TIPO’s “first filed, first served” policy, most cases that are currently undergoing substantive examination are those requests filed prior to December 2006.

Reasons that prolong application pendency have been analyzed to be the lacking of examiners; the increasing complexity of new technologies, as well as the trainees recruited within the last three years not being able to fully share the workload. Moreover, carrying out the Patent Quality Advancing Program also slows down the examination process. The TIPO experienced a 61% increase in patent applications from 1999 to 2008; among those cases filed, invention applications make up the most significant number. However, the TIPO’s examination manpower does not have a corresponding increase in staff to mirror the growing number of applications.

The long pendency at Taiwan’s patent office negatively affects the IT industry’s shorter life cycle products. Industry leaders warned that if the length of pendency does not improve, it might discourage industries from filing patent applications, establishing R&D units, or even making investments in Taiwan. Furthermore, it seriously impacts Taiwan’s global IP layout and plant investment.

The backlog problem drew the attention of the Minister of Economic Affairs (MOEA) and in January, a patent examination review forum was conducted at the TIPO. The Minister heard various opinions from industry experts and representatives, and expressed his full support for the measures proposed by TIPO to cut its backlogs.

TIPO’s proposed goals and measures corresponding to both short-term and long-term projects are as follows:

1. The short-term project aims at clearing up the current pending 140,000 applications, while anticipating closing a total of 269,000 cases by the year 2014. Proposed actions include recruiting 200 fixed-term patent examiners and increasing the number of patent searches conducted through outsourcing. In the event that the proposed solution is not practicable, the MOEA may consider the substitute measure of commissioning individuals or private companies to do on-site searches at the TIPO, but will still need an increase in outsourced examiners.

2. The long-term project has targeted the departmental structure for patent examination. It has been proposed that Taiwan should set up a patent development fund for the continuous needs of hardware and software facilities relating to patent searches and information databases. In addition, the government should create greater incentives for good patent examiners to stay with the TIPO; a change of current salary structure and sufficient rewards are therefore needed. Those senior examiners who have accumulated 10 or more years’ experience, should be certified as patent attorneys and should be exempt from taking all or parts of the National Patent Bar Exam.

Considering that the major IP Offices in the world have all experienced serious backlog problems, the TIPO is aware that there is no shortcut to magically overcome this issue, and has prepared to combat backlogs aggressively through short-term and long-term plans.