The Patent Prosecution Highway (PPH) pilot program between Taiwan Intellectual Property Office (TIPO) and the Japan Patent Office (JPO) will commence from May 1, 2012. This program is expected to be carried out for a trial period of two years and both offices will then evaluate the results and determine if it is to be extended after the trial period.
Below are the requirements and documents for requesting examination under PPH for a Taiwanese patent application at TIPO.
Requirements
- For the Taiwanese (TW) patent application –
- It has validly claimed the JP or PCT/JP priority.
- It is a laid-open application and is pending under the substantive examination stage in which TIPO has not yet issued any first examination opinion.
- If the TW application is not laid-open at the time of filing the PPH request, the applicant must file an early laid-open request at the same time when filing the PPH request.
- If a request for substantive examination has not been filed or a substantive examination has not been conducted, the applicant should file a request for substantive examination and then file the PPH request after TIPO notifies a substantive examination will be conducted.
- The corresponding JP or PCT/JP patent application has one or more claims that are examined to be allowable by JPO.
- All claims of the TW patent application must sufficiently correspond to one or more claims which are allowable by JPO in the corresponding JP or PCT/JP patent application (i.e. the scope of the claims of the TW patent application must be the same or narrower than that of the JP or PCT/JP patent application; if necessary, the Applicant can state in the PPH request that an amendment is intended to be filed and then file the amendment upon notification by the Examiner).
Documents Needed
- A PPH request form
- Copies of all office actions of the corresponding JP or PCT/JP patent application (applicant can also request TIPO to obtain the same online from JPO AIPN by stating the relevant information with name and date), with their Chinese translations
- Copy of the allowable claims by JPO (applicant can also request TIPO to obtain the same online from JPO AIPN), with their Chinese translations
- Copies of the cited references by JPO (if the cited reference is a patent literature document, then it may be omitted)
- Claim correspondence table (to explain the sufficient correspondence of the TW claims and the allowable claims by JPO; if TW claims are to be amended, this table can be supplemented together with the amendment of TW claims to be filed later)
- Other documents which may facilitate the PPH examination
