PDX Program Between Taiwan and Japan Commencing From December 2, 2013

The prevailing Enforcement Rules of Patent Act in Taiwan was revised and implemented on January 1, 2013 which provides electronic priority document exchange with counterpart foreign intellectual property offices.

Japan is one of the major trade partners with Taiwan, and also the largest patent applicants in Taiwan for years. According to the 2012 patent statistics, Taiwan Intellectual Property Office (TIPO) receives 13,978 applications from Japanese applicants, while Japan Patent Office (JPO) receives around 3000 applications from Taiwanese applicants. In order to ensure a high quality, expeditious and inexpensive patent protection for applicants, Interchange Association (Japan) and Association of East Asian Relations (Taiwan) have recently signed a memorandum for the mutual cooperation in the field of priority document exchange (PDX). The PDX program between TIPO and JPO has then implemented as from December 2, 2013. The main points are summarized below:

1. The PDX program is restricted to the national patent applications including invention and utility model applications (not for design or trademark applications) filed in Taiwan and Japan only; the PCT international applications from Japan (designated office) are not under this program.
2. Applicant may request an access code from the office of first filing (OFF) and submit the same to the office of second filing (OSF) within 16 months from the earliest priority date.
3. In order to encourage the use of PDX program, there is no need for the applicant to pay official fee when requesting for an access code.
4. According to TIPO, an access code will be issued within about 20 working days (or 3 to 5 working days by a speed-up process) upon the request from the applicant.
5. For applicant who has first filed a patent application in Japan and wishes to file a patent application in Taiwan by claiming the priority of said Japanese application, he can provide the access code without sending the paper priority document at the time of filing the Taiwanese application or within 16 months from the priority date.
6. Both TIPO and JPO have scheduled to exchange electronic priority documents twice a month. Thus TIPO is expected to retrieve the encrypted file online from JPO within about 15 days after the applicant has submitted an access code for the electronic priority document. In case the access code or application number of the priority case provided by the applicant is in error, TIPO will notify the applicant to submit within two months either the correct information of said access code or application number, or the paper priority document. Failure of submitting the same will cause the priority claim to be dismissed.