TAIWAN-US PPH Pilot Launched

The Patent Prosecution Highway (PPH) pilot program between the Taiwan Intellectual Property Office (TIPO) and the US Patent & Trademark Office (USPTO) has commenced, as of September 1, 2011. The trial period will last for one year before evaluation for full implementation commences. Applicants whose claims have been determined to be allowable in the office of first filing can undergo accelerated examination under the PPH in the office of second filing. It is hoped that the launch of the PPH will alleviate the stress on TIPO’s current 45-month long pendency, especially for invention patent applications.

The requirements for requesting accelerated examination at TIPO under the PPH pilot program are as follows:

(1)    The Taiwan application has validly claimed priority to its US counterpart, or to a Patent Cooperation Treaty (PCT) application with US designation, where the US counterpart or PCT application is the first-filed counterpart without further priority claim.

(2)    One or more claims from the corresponding US application have been determined patentable or issued by the USPTO. Should the US examiner in the Notice of Allowability, Non-Final Rejection, Office Action Summary of Final Rejection or that of ex parte Quayle Office Action expressly indicate claim allowance, such indication can prove allowability of claims before TIPO.

(3)    All claims, either originally filed or amended, must sufficiently correspond to, or be of a narrower scope than, the claims allowed by the USPTO.

(4)    The Taiwan application has received notification of substantive examination, but not the first office action from TIPO before requesting PPH examination.

For a Taiwan application that has not been made public at the time of requesting PPH examination, early publication must be requested.

In the meantime, the existing Accelerated Examination Program (AEP) for invention applications, which was initiated unilaterally by TIPO in 2009, will continue to be in effect. The AEP is being maintained because it can be regarded as a supplementary accelerated examination program to the PPH pilot. Furthermore, the AEP applies to all foreign counterparts of Taiwan applications, and is not limited to US counterpart applications. Applications eligible to request for AEP include the following:

(1)    Any application that has validly claimed priority to foreign counterpart, and the foreign counterpart has been granted under substantive examination by a foreign patent office.

(2)    The European Patent Office, Japan Patent Office or USPTO has issued an office action during substantive examination, but is yet to allow the application’s foreign counterpart. A request for AEP under this condition will need to include a copy of the office action in a submission and that of the search report from any of these patent offices.

(3)    When the applicant is preparing to, or has, put the claimed invention into practice, the applicant may apply for AEP on the grounds that the invention application is essential to commercial exploitation.

Where the AEP differs from the PPH pilot program is that the PPH request can be accepted only when the US counterpart is the basis for priority claim and has been or is soon-to-be granted by the USPTO. Additional conditions for a PPH request are that no office action can have issued by TIPO, and moreover, a showing of any allowable claim from the US counterpart is necessary. In contrast, the AEP does not have such restrictions of venue of first application, pending status of Taiwan application or allowable status of the foreign counterpart.

Based on TIPO statistics, on average, an official opinion can be issued within 74.6 days under the AEP, compared to the current 45-month pendency. It is expected that under the PPH pilot program, an application will enjoy an even shorter pendency than under the AEP.