Patent

Expedited Patent Prosecution Program for Invention Applications

As planned, the Taiwan Intellectual Property Office (TIPO) has brought the “Expedited Patent Prosecution Program for Invention Applications” into the one-year trial implementation as of January 1, 2009. Under this program, once an applicant for invention application submits to the TIPO copies of patent documents indicating that its foreign counterpart has been examined and allowed by any other country, the TIPO will give priority to such application in patent prosecution, and will issue an office action within six months.

The implementation of this program mainly refers to the programs of Patent Prosecution Highway (PPH) currently adopted in many other foreign countries. Under these programs, once an invention application counterpart has been allowed by the patent authority of any PPH member country, other member countries may examine such application by reference to such allowance result, so as to effectively reduce the time for prosecution. Although Taiwan has not signed up for any PPH program, TIPO has adopted the spirit of the PPH system, so as to make Taiwan accord with the international practice.

TIPO has made some adjustments with respect to the implementation of the program. For example, most countries prescribe that only an application which has not been examined at home can request for expedited patent prosecution. By contrast, Taiwan has loosened the restriction so that all of applications under examination can be subject to this program. Under this program, once a foreign counterpart has been allowed and published in any other country or is about to be published, an applicant may request for expedited prosecution by submitting copies of (1) the Notice of Allowance issued and the claims allowed by the patent authority of such country, (2) a Chinese translation thereof, and (3) a Statement stating the difference between the set of claims pending before the TIPO and the set allowed in such country, the application will be examined within six months from the date of receiving such request.

According to the statistics, more than 20,000 invention applications are filed with the TIPO every year, and presently, about 140,000 applications are pending before the TIPO, among which about 109,000 applications concern inventions. Given the limited prosecution manpower and in the face of problems with respect to the lengthy prosecution period, TIPO decided to launch the local PPH program. After the one-year trial implementation, TIPO will, through review and assessment on the basis of the implementation results, decide on whether this program is to be continued.

With respect to the details, although most invention applications in Taiwan correspond to counterpart applications in European Union, Japan and the United States, TIPO set no restriction on the country qualified for expedited patent prosecution. Therefore, expedited patent prosecution may be requested for on the basis of a counterpart allowed in any country including the Mainland China. Given the difference between the Chinese languages across the Straits, an applicant is still required, when submitting materials originated from the Mainland China, to translate such materials into traditional Chinese language, the official language in Taiwan.

TIPO suggests that, although this program does not mandate a request be attached with the relevant patent prosecution history or foreign office actions, however, to enable Taiwan’s examiners to accord with the foreign prosecution results, it is highly recommend that relevant patent prosecution history be submitted along with the request.