Taiwan-Spain PPH Mottainai Pilot Program Launched

TIPO launched a Patent Prosecution Highway Mottainai ("PPH Mottainai” ) pilot program with the Spanish Patent and Trademark Office (SPTO) on October 1, 2013, following the Patent Prosecution Highway ("PPH” ) programs with the USPTO and the JPO. The PPH Mottainai pilot program is a major milestone in international cooperation on bilateral examination as it is an enhanced version of the general PPH programs. It may bring more efficiency in patent search and examination to both offices and accelerate the examination process.

“MOTTAINAI” is a Japanese term meaning “a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized.” The general PPH programs enable the Office of Second Filing where the corresponding application was filed to exploit the search and examination results issued by the Office of First Filing to advance examination. To make the PPH program more available to patent applicants, the PPH Mottainai, an enhanced version of the general PPH program, allows an applicant to make a request for PPH examination at the Office of Later Examination by submitting the examination results of the Office of Earlier Examination, whether or not such result has been issued by the Office of First Filing as designated in the general PPH program.

Under the PPH Mottainai program, there are four requirements for requesting accelerated examination with TIPO as follows:

l            Both the Taiwanese (“TW”) application for which PPH examination is requested and the Spainish (“ES”) corresponding application forming the basis of the PPH examination must have the same earliest priority date (or filing date).

l            The corresponding ES application forming the basis of the PPH examination must have at least one claim that has been determined allowable/patentable by the SPTO.

l            All of the claims of the TW application, whether as originally filed or as amended thereafter, must sufficiently correspond to one or more claims of the corresponding ES application that have been determined allowable/patentable by the SPTO, upon requesting PPH examination.

l            The applicant has received the notification of forthcoming substantive examination of the TW application, but the first office action has not been issued by TIPO.

After the PPH program between the TIPO and the USPTO was implemented, PPH examination was requested in 291 applications from September 2011 to December 2012 and the allowance rate was 93%. The PPH pilot program with the JPO was launched starting in May 2012, and the applications for which PPH examination was requested has totaled 208 as of the end of December 2012. The allowance rate in this case reached 98%. According to TIPO statistics, a first Office Action issues approximately 1.7 months after PPH examination is requested, compared to 38.8 months on average in a normal patent application. Such statistics demonstrate that international cooperation in patent examination tremendously benefits applicants.

The PPH Mottainai between TIPO and the SPTO provides applicants another option to expedite their patent applications.