In order to shorten the waiting time for an invention patent application, Taiwan Intellectual Property Office (TIPO) started a one-year trial period of “Accelerated Examination Program (AEP)” on January 1, 2009. Until now there are about 475 applications filed for AEP, and the average time for TIPO to issue the first official action or decision on AEP applications is about 52.5 days. As the current AEP program is restricted on those cases with allowed corresponding applications only, TIPO has decided from January 2010 to broaden the scope of AEP which covers the following:
- 1) where a corresponding foreign patent application accepted by a foreign country after substantive examination was conducted;
- 2) where a corresponding foreign patent application issued with official action and search report and yet is still pending a decision before the USPTO, JPO or EPO;
- 3) where the invention is required for commercial practice.
The applicant who fits into any of the above three situations and is interested to file a request for AEP, must first file a request for substantive examination (or re-examination) and wait until he receives from TIPO a notice that said substantive examination or re-examination will be conducted, before filing said request for AEP.
For the above # 1), besides those required documents for current AEP, the applicant must submit additional documents, such as the official actions and search report issued by the foreign patent office during the prosecution of said foreign application.
As to the above newly added # 2), if a corresponding patent application in the US, Japan or Europe has been issued with an official action and search report, it could be eligible to request for “AEP” in Taiwan. Further, if the claims contained in said foreign corresponding application filed with the USPTO, JPO and EPO are the same with the ones filed in the Taiwanese application, then TIPO will, in principle, issue an examination result within six (6) months, and if the two sets of claims are not the same, the examination result will be issued within nine (9) months.
As to the above newly added # 3), if the applicant needs the examination result for purpose of commercial practice, the applicant has to submit relevant materials, such as license agreement, catalogues, etc. in order TIPO may expedite the examination and issue an examination result on said patent application within nine (9) months.
In regard to the required documents, please refer to the following table. Should you have any questions, please let us know.
NEW ACCELERATED EXAMINATION PROGRAM IN TAIWAN (2010)
| Bases to apply for AEP | Required Documents | Corresponding Foreign Patent Office | Processing Time for examination results |
|---|---|---|---|
| If the corresponding foreign patent application has been allowed after a foreign patent office has conducted substantive examination | 1. AEP application; 2. Granted/published claims, or notice of allowance (*1) with allowed claims of foreign application and accompanied with Chinese translation; 3. All official actions (*2) and search reports (*3) issued by said foreign patent office, with brief Chinese translation if not written in Chinese or English; 4. Explanation on differences between the claims of foreign application and the claims of Taiwan application (to be omitted if they are the same); 5. Non-patent references cited by foreign patent office if the corresponding foreign application was objected / rejected for lacking novelty or inventive step (no need to submit the cited patent references); ※ Aside from the above, the applicant may also file other documents or supportive reasons which may be helpful. | ANY country that conducts substantive examination | 6 months |
| If the corresponding foreign application is still pending before USPTO, JPO or EPO but official action and search report has been issued | 1. AEP application; 2. Claims of foreign application examined by USPTO, JPO or EPO, with its Chinese translation; 3. Official action (*2) and search report (*3) from USPTO, JPO or EPO, with brief Chinese translation if not written in English; 4. Explanation on differences between the claims of foreign application and the claims of Taiwan application (to be omitted if they are the same); 5. If the official action and/or search report as mentioned in #3 indicated the corresponding foreign application lacks novelty or inventive step, supportive reasons should be submitted; 6. If the references cited in the above #5 are not patent related documents, please submit the same (no need to submit if they are patent related references). | USPTO JPO EPO (either one) | 6 months (the foreign claims are the same to the present claims in Taiwan) 9 months (the foreign claims are different from the present claims in Taiwan) |
| Invention required for Commercial Practice | 1. AEP application 2. Exhibits such as photos of products, catalogues, licensing agreement, etc. | 9 months |
REMARKS (see the above notations with * )
- *1 Such as “Notice of Allowance and Fees Due (PTOL-85)” by USPTO; “Notice of Allowance” by JPO; and “Decision to Grant a European Patent” by EPO.
- *2 Such as “Non-final rejection” by USPTO; “Notice of Refusal Grounds” by JPO; and “Communication pursuant to Article 96 (2) EPC or “Intention to Grant” or “Communication about Intention to Grant a European Patent” by EPO.
- *3 Such as an “International Search Report (ISR)” produced by USPTO, JPO or EPO designated by PCT as ISA or a “European Search Report” produced by EPO.
