To reduce the time normally required for examining an invention patent application in Taiwan, the Taiwan Intellectual Property Office (TIPO) pronounced the “Guidelines of Accelerated Examination Procedure for Invention Patent Applications” on December 31, 2008. This was done in line with the Patent Prosecution Highway (PPH) used in major foreign countries despite Taiwan has not yet signed such agreement with any other country. The highlights of the “Guidelines” are:
- The pilot program will be effective starting January 1, 2009. The accelerated examination procedure may be applied to pending invention patent applications in Taiwan if any of the patent family or the corresponding foreign patent application(s) has already been allowed (regardless of whether foreign priority is claimed in Taiwan or not) by a foreign Patent Office, including but not limited to, such as USPTO, JPO, and EPO, through a substantive examination.
- For an invention patent application, if the Applicant filed a request for substantive examination with TIPO in time and TIPO did notify the Applicant or his agent that a substantive examination on the same case will be conducted, then a request for accelerated examination per Guidelines provided may be filed. If TIPO upon reviewing the request finds it to fulfill the requirements, it will, in principle, issue an examination result (including Examination Opinion Letter or Notice of Decision) to the Applicant within six months. However, this time frame may be longer dependent upon the technical fields relating to the application.
- To file a request for accelerated examination, the following should be submitted:
- a) An application form;
- b) Copies of claims published/granted by the foreign Patent Office, together with their Chinese translations; or copies of the Notice of Allowance and claims determined patentable by a foreign Patent Office, together with their Chinese translations; and
- c) An explanation outlining the differences between the patented claims in the foreign application and the corresponding pending claims filed in Taiwan. However if the two sets of claims are identical with each other, then the explanation may be omitted.
- d) Although not required, yet the Applicant may submit favorable documents or exhibits, such as the search reports issued by foreign Patent Office, communications exchanged between the Applicant and foreign Patent Office in regard to the office action(s) and the response (and amendments), to facilitate the examination.
