Procedures and Documents Required for TW-US PPH Pilot Program

Applicants who request accelerated examination under the PPH pilot program with TIPO will need to submit supporting documents for formality check before the commencement of the accelerated examination.  TIPO will notify any applicant who does not qualify to participate in the PPH pilot program and will grant an opportunity for the applicant to complete the formality requirements.  If such an applicant still cannot comply with the requirements of the pilot program, the applicant will be notified and the corresponding application will undergo normal examination. 

Documents to be submitted include the following:

(1) Copies of all office actions relating to the corresponding USPTO application(s)

a. Applicants can either provide copies of office actions along with their request for accelerated examination, or clearly identify information related to the office actions to allow for retrieval from the USPTO Public PAIR.  

b. In addition to the office actions issued before the grant of the request of accelerated examination at TIPO, actions relevant to patentability issued after the participation in the TW-US PPH pilot program shall also be submitted.  

c. No translation of the office actions is required. 

(2) A copy of the claims determined to be allowable or patentable by the USPTO.

a. Applicants can either provide claims along with their request for accelerated examination, or clearly identify information related to the claims to allow for retrieval from the USPTO Public PAIR. 

b. Supporting documentation may include amendments, documents submitted at filing, or a copy of publication of the granted patent where claims are shown to be allowable or patentable.

c. No translation of the claims is required, but it is preferred that such a translation be provided.

(3) Copies of the references cited by the USPTO examiner

a. References cited in “Detailed Action” or “Reason for Allowance” as basis for either refusal or allowability shall be provided.

b. Cited references in the form of non-patent literature shall also be submitted.

c. No translation of the references is required. However, translation may be requested when deemed necessary.

(4) A claim correspondence table

a. A table shall be provided that outlines the correspondence between the claims to be allowable or patentable by the USPTO and the claims that the applicant intends to proceed with under the PPH pilot program.

b. If claims on file are not corresponding to any USPTO allowable claims, but an amendment of claims to reflect such a correspondence is intended, the applicant shall provide an indication of such an intention in the PPH request form and the submission of the clam correspondence table may be postponed until the amendment is made.

Moreover, it is noted that there is no official fee for requesting an accelerated examination under the PPH pilot program.