After PPH programs signed between Taiwan Intellectual Property Office (TIPO) and USPTO as well as JPO, TIPO signed in September 2013 a Patent Prosecution Highway (PPH Mottainai) pilot program with Spanish Patent and Trade Mark Office (SPTO) and this program is to be enforced for a two-years trial period from October 1, 2013.
According to this PPH Mottainai program, as long as one of TIPO or SPTO has made an (allowance) decision (examination result) on a patent application on its national application, the applicant could use the same result to file a request for accelerated examination under the PPH program with another national Patent Office.
The requirements of this PPH Mottainai are more loosened in comparison with other PPH programs signed by TIPO with other national Patent Offices. Namely, 1) Where Taiwan application was used as the priority-based Spanish application, and the Spanish application was allowed earlier than the Taiwanese application, a PPH accelerated examination request could still be filed; 2) If the Taiwanese application and the Spanish application contain the same international priority claimed based application (such as a US priority) and when the Spanish application has been allowed first, the applicant could still file a request for accelerated examination under PPH Mottainai for the corresponding Taiwanese patent application.
In order to file a request for accelerated examination under PPH Mottainai, the following requirements must be met:
- Taiwanese and Spanish patent applications which form the basis of the PPH request shall both contain a same earliest date (whether this is a priority date or a filing date)
- The corresponding Spanish application contains at least one or more claims allowed by SPTO;
- Taiwanese application contains claims corresponding to one or more claims allowed in the Spanish application;
- Taiwanese application should have been notified by TIPO that a substantive examination would be commenced yet the first OA has not yet been issued.
It is to be noted that in order for an applicant to file an accelerated examination under PPH Mottainai, the following documents must be submitted:
- Photocopies of OA issued by SPTO with its Chinese/English translation;
- Claims allowed by SPTO with its Chinese/English translation; and
- Photocopies of the non-patent literature cited by SPTO on the corresponding Spanish application (no translation is needed).
