Taiwan and Korea Sign Memoranda of Understanding for Patent Cooperation

Taiwan and Korea signed a Memorandum of Understanding for the Patent Prosecution Highway Program (the PPH Program) on June 15, 2015. This new mechanism that facilitates prosecution of invention of patent applications will be effective as of July 1, 2015. Under the PPH Program, where at least one of the claims of an invention application are determined to be allowable in either Patent Office, will be eligible for accelerated examination in the counterpart Office.

Following mutual agreements of the PPH program signed with the U.S., Japan, and Spain, the Taiwan Intellectual Property Office (TIPO) entered into its fourth agreement with the Korean Intellectual Property Office (KIPO). Statistics manifest that a total of 797 Taiwanese applications had utilized the PPH mechanism in 2014 and the average time span for examination was reduced to 11 months, only 1/3 time spent compared to those under regular procedure. 

Based on the Memorandum of Understanding, the applicability of PPH does not limit to the scenario where office actions from the Office of First Filing (OFF) should be issued prior to those from the Office of Second Filing (OSF). An office action firstly issued from either side of the Patent Offices may serve as the basis to apply for PPH Program to accelerate examination in the counterpart Office. For example, where an invention application is firstly filed with TIPO and then filed with KIPO, the claims allowed by KIPO may be submitted to TIPO for the application of PPH Program in Taiwan if KIPO issues its allowance opinion earlier than TIPO.

Korea has 2,127 patent applications filed in Taiwan, where LG Chemical, Samsung Display, and Samsung Electronics are some top 20 foreign filers in Taiwan. On the other hand, Taiwan has 768 patent applications filed in Korean, where TSMC, Winbond, and MediaTek are major Taiwanese filers in Korea. It can be expected that applications from industries of chemical engineering, electronics, and semiconductors will benefit greatly from this program.

On the same day, TIPO and KIPO also agreed into another memorandum for electronic exchange of priority documents. Under this structure, applicant may claim priority to the earlier filed application at the counterpart Office using electronic exchange system. It is expected to save substantial time and costs that would have spent via traditional way of courier of original copies. Detailed procedure of the system will be further processed by collaboration work of the two Offices.