According to the Patent Act, the Taiwan Intellectual Property Office (TIPO) may notify an Applicant, either at the request of the Applicant or ex officio, for an interview during the patent examination. In the past, the Applicant or his/her attorney had to attend in person the interview held at TIPO. Later, TIPO allowed video interviews at its service offices in Hsinchu, Taichung, Tainan, and Kaohsiung. Considering communication technology advancements and the impacts of the COVID-19 pandemic, TIPO relaxed the interview procedures in 2022 to provide the remote video interview under specific conditions.
However, Taiwan patent law and regulations do not specify the procedures for telephone usage during the examination process. In practice, the examination opinion letters or the decisions issued by the TIPO have included the name and telephone number of the examination group and the contact person (Examiner), so that the Applicant can still contact the Examiner by telephone to have a brief discussion or inquiries. However, due to the shortage of internal examiners in TIPO, some patent applications are currently handled by external examiners, preventing the direct communication between the Applicant and the actual Examiner in charge. Currently, there are about 80 external examiners who are mostly professors from national universities or experts at research institutes. To provide applicants with a convenient communication channel and enhance the examination service efficiency, TIPO held discussions with the Taiwan Patent Attorneys Association (TWPAA), and decided to implement the “Optimization Plans for Telephone Communication and Remote Video Interview with External Examiner” on a trial basis starting from September 1, 2024.
The key points of above telephone communication and interview system for Taiwan patent cases are as follows:
TELEPHONE COMMUNICATION
- General telephone communication (with internal Examiner)
- Initiator – Applicant/agent or Examiner
- Timing – after the Applicant/agent receives an Examination opinion letter from TIPO
- Content of Communication – explanation of applicable regulations or review opinions; communication of simple and substantive content.
- Effect – if the telephone communication is initiated by the Examiner, he or she may appropriately disclose his or her preliminary viewpoints; also, the Examiner can communicate over the telephone on minor amendments in order to overcome the rejection of patent, so that the Applicant can obtain a patent as soon as possible. In case the Examiner finds new evidence that is sufficient to negate his/her previous viewpoints, another Examination Opinion Letter should be issued for the Applicant to make a response or amendments.
- Three-party telephone conference (Applicant/agent, TIPO’s in-charge Examiner, external Examiner)
- Initiator – Applicant/agent
- Timing – after TIPO has issued an Examination Opinion Letter, the Applicant/agent can contact the in-charge Examiner whether it is possible to hold a telephone communication with the External Examiner
- Content of Communication – explanation of applicable regulations or review opinions; communication of simple and substantive content.
- Limitation – TIPO may, in principle, provide only one time of three-way conference call within 20 minutes. For a patent application that could not be discussed through a telephone, the Applicant should opt to file a request of interview, instead of using a telephone communication.
INTERVIEW
- Taiwan Practice of Patent Interview
- Request of interview is applicable to a pending patent application at the primary examination or re-examination stage (invention and design), or an invalidation application of granted patent (invention, design, and utility model)
- An interview request can be filed by a patent applicant, demandant, patentees, or an interested party.
- The application of interview must include: the version of specification, claims, and/or drawings, for the basis of interview; the matter of the interview, such as industrial applicability, novelty, inventiveness, enablement, etc.
- Manner of interview: in-person interview at TIPO (head office), video interview at TIPO’s service centers (as stated above), or remote video interview.
- Official fee: NT$1000.
- The interview request should be made during the patent examination and before a decision is rendered. However, TIPO may also not allow for an interview if the case is already clear after assessment.
- In principle, an interview shall be conducted within one hour and one time only for each patent application; an interview record shall be made on the spot and signed or stamped by attendees.
- Taking any photos, audio or video recording during the interview without the consent by TIPO is prohibited.
- The best timing for an Interview: the Applicant can request an Interview at the same time when filing a Response (with the amendments of specification/claims) in reply to an Office Action (OA) during the re-examination procedure (the Examiner will not allow for an Interview if the Applicant has filed only a petition for re-examination, without any reasons or amendments).
- Effect of the Interview – the Examiner can disclose his/her preliminary viewpoints appropriately, discuss and provide suggestions for the amendments; if the Applicant wishes to discuss with the Examiner during the interview for other amendment possibilities based on the amended version, the Applicant should provide the amended version and the reasons when requesting an Interview, and it is not allowed to propose several amended versions for the Examiner to review or decide.
- Handling after the Interview – If any new evidence is found, the TIPO will notify the Applicant to make another Response or amendments; during the interview, the Examiner will make an Interview Record and provide 15 to 30 days for the Applicant (or one to two months for a foreign Applicant) to make a Response and amendments.
- Remote Video Interview with External Examiner
- Started on September 1, 2024 on a trial basis.
- After confirming that the external Examiner possesses the hardware and software equipment and network bandwidth specified by the TIPO, a remote video interview can be conducted with the external Examiner located in a non-public place.
- Other procedures are similar to that of an Interview held with the internal Examiner and a three-party conference call.
