Taiwan Intellectual Property Office (TIPO) signed Patent Prosecution Highway (PPH) pilot program with Korean Intellectual Property Office (KIPO) to commence the PPH program between the two countries as from July 1, 2015. This program is expected to be carried out for a trial period of five 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 accelerated examination under PPH for a Taiwanese patent application at TIPO.
Requirements
- The Taiwanese (TW) patent application is pending under the substantive examination stage in which TIPO has not yet issued any first examination opinion; 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 Taiwanese (TW) patent application must be laid-open at the time of filing the PPH request, otherwise the applicant must file an early laid-open request at the same time when filing the PPH request.
- Both Taiwan (TW) application and Korean (KR or PCT/KR) application(s) forming the basis of the PPH request shall have the same earliest filing date.
- At least one corresponding KR (or PCT/KR) application has one or more claims that are examined to be allowable by KIPO.
- All claims of the TW patent application must sufficiently correspond to one or more claims which are allowable by KIPO in the corresponding KR (or PCT/KR) patent application, i.e. the scope of the claims of the TW patent application must be the same or narrower than that of the KR or PCT/KR patent application, otherwise the Applicant must file an amendment on claims at the same time when filing the PPH request.
Documents Needed
- A PPH request form
- Copies of all office actions of the corresponding KR (or PCT/KR) patent application (applicant can also request TIPO to obtain the same online from KIPO K-PION by stating the relevant information with name and date), with their translations in Chinese or English
- Copy of the allowable claims by KIPO (applicant can also request TIPO to obtain the same online from KIPO K-PION), with their translations in Chinese or English
- Copies of the cited references by KIPO (without translations), but if the cited reference is a patent literature document, then it may be omitted
- Claim correspondence table (to explain the correspondence relationship between the TW claims and the allowable claims by KIPO)
- Other documents which may facilitate the PPH examination
