Recently, the Taiwan Intellectual Property Office (TIPO) signed an agreement of Patent Prosecution Highway (PPH) with Canadian Intellectual Property Office (CIPO) to begin a pilot program of PPH on February 1, 2018 for three years. This program will be automatically extended after the three-year period, unless either patent office formally requests to terminate the program, due to the examination workload or any other reasons.
The PPH agreement between TIPO and CIPO is based on a Mottainai-type program. For patent applications of the same invention filed in Taiwan and Canada, the applicant may use the allowable claims of patent application from the Office of Earlier Examination (OEE) to request a fast-track examination on the corresponding patent application by the Office of Later Examination (OLE) under the PPH program.
The requirements for filing a PPH request with TIPO are as follows:
- Both Taiwan and Canadian patent applications must have the same earliest international filing date.
- The corresponding Canadian patent application must have at least one or more allowable claims after examination.
- For a Taiwan patent application at the time when filing PPH request and subsequent amendment, all the claims must sufficiently correspond to the allowable claims of the Canadian patent application.
- Taiwan patent application must be pending under the substantive examination, and the TIPO has not yet issued any initial examination opinion.
In addition to Canada, bilateral PPH agreements were also made between Taiwan and United States, Japan, Spain, Korea and Poland (only TIPO-USPTO adopted a regular PPH program). Per the latest PPH statistics from TIPO, the average time for issuing a first examination opinion is about 1.8 months and the average time for issuing an examination decision is about 4.3 months. Accordingly, the applicant can take advantage of the fast-track examination via PPH program for a Taiwan invention patent application that has met the PPH filing requirements.
