Patent

Amendment to Accelerated Examination Program for Invention Applications took effect on January 1st 2010

After JPO and USPTO piloted the Patent Prosecution Highway (PPH) in 2006, the PPH has grown to include more and more national patent offices through a series of bilateral cooperation and alliances. While these national patent offices share their works across the country boarders, the program substantially benefits the applicants, including faster examination and lower costs. Owing to the unique political standing, Taiwan’s Intellectual Property Office (TIPO) is not eligible to join such an alliance with the other countries; however, in 2009 we launched our own accelerated examination program for invention applications in order to cope with the international trend and keep the TIPO’s competitiveness. After a year’s trial, the TIPO decided to continue the accelerated examination program and increased two additional grounds for the eligibility of such program. The Amendment took effect from January 1st 2010.

Again, there is no official fee for requesting an accelerated examination in the continued program; however, only applicants of invention applications are eligible to request. Three grounds on which the request may be made for accelerated examination include:
(1) Invention application’s foreign counterpart has been allowed upon substantive examination by a foreign patent authority. To support that the invention application’s foreign counterpart has been allowed, applicants may submit copies of official notices, i.e. “Notice of Allowance,” “Decision to Grant A Patent,” or “Decision to grant a European Patent.”

(2) The EPO, JPO, or USPTO has issued Office Action(s) with search report(s) but yet to allow the foreign counterpart. Types of Office Action may include “Non-final Rejection” from the USPTO, “A Notification of Reasons for Refusal” from the JPO, the “Communication pursuant to Article 96(2) EPC,” or “Intention to Grant,” “Communication about Intention to Grant a European Patent” from the EPO. International Preliminary Examination Report (IPER) under the PCT system, however, is not regarded as an Office Action upon substantive examination. As for search reports, International Search Report (ISR) issued by International Searching Authority (ISA) and European Search Report issued by EPO are considered qualified search reports.

(3) Invention is essential to commercial exploitation. To support that the invention application is essential in commercial exploitation, applicants should submit proofs, i.e. licensing agreements or marketing brochures.

A comparison chart for the three eligible grounds on which the accelerated examination may be requested, as well as documentation and time frame thereof is shown on the next page.