In order to speed up the examination process of invention patent applications, Taiwan began the Patent Prosecution Highway (PPH) program with United States, followed by Japan, Spain and Korea, respectively, from the year of 2011 to 2015. Recently, the Taiwan Intellectual Property Office (TIPO) signed an agreement with the Polish Patent Office (PPO) to commence PPH program between the two countries from August 1, 2017.
Except for the regular PPH program between TIPO and USPTO, TIPO’s PPH program with JPO, SPTO, KIPO and PPO, is based on a Mottainai model. Namely, a foreign applicant who first filed a national patent application in Japan, Spain, Korea or Poland (or a PCT application designating said country) and then filed the same invention in Taiwan by claiming the priority of said foreign basic application, they may use the favorable examination results (with claims that have been determined to be patentable) from the Office of Earlier Examination (OEE) to file a PPH request with the Office of Later Examination (OLE).
However, TIPO’s PPH program with USPTO requires that the applicant must have claims which are determined to be allowable in the Office of First Filing (OFF), and then they are eligible to file a PPH request with the Office of Second Filing (OSF) by submitting said allowable claims from OFF.
For filing a PPH request with TIPO, the Taiwanese invention application must be pending under the substantive examination stage, in which TIPO has not yet issued a first examination opinion. No official fees are required, but the applicant should provide copies of all office actions of the corresponding application (or request TIPO to obtain the same online by stating the relevant information), cited references (may be omitted for patent literature documents), the allowable claims and their correspondence relationship with Taiwanese claims, any other available documents which may facilitate the PPH examination, plus necessary translations, and so on. Also, if the Taiwanese claims do not sufficiently correspond to the allowable claims of the corresponding application, the Applicant will need to file an amended claim at the same time when filing the PPH request.
Per the PPH filing statistics from June 2017, TIPO takes an average of 53.9 days for issuing a first examination opinion, and 132.2 days for issuing an examination decision. Thus, if an applicant files a PPH request for their Taiwanese patent application, they can receive the examination results in around two to four months.
