1. A few years ago, Taiwan actively started the discussions and proposals for amending the Patent Act and Trademark Act. The draft amendments of both Acts were approved by the Executive Yuan (Cabinet) and sent to the Legislative Yuan for the first reading in 2023. The main points of the amendments included: abolishing the trademark opposition system, replacing the trademark invalidation and revocation with a trial system like Japan’s, abolishing the patent re-examination system, and changing the patent invalidation system to a trial system like Japan’s. Under such trial system, each case would be reviewed by three Examiners. If the Applicant is dissatisfied with the examination results of the review or trial system, a lawsuit could be filed directly with the “Intellectual Property and Commercial Court” without going through the current appeal process by the Ministry of Economic Affairs. The nature and procedure of this lawsuit would follow the procedure of civil litigation rather than an administrative litigation.
However, due to opposing comments from the IP sector and Taiwan new President/Legislator elections in January 2024, the draft amendments of both Acts were not reviewed during the session and thus became void according to the relevant law. In March 2023, the Director of the Taiwan Intellectual Property Office (TIPO), Ms. Hong, retired and was replaced by Mr. Liao, who has experience being a patent examiner. He is the first TIPO Director with a technical background and familiarity with patent affairs. After taking office, the new Director Mr. Liao recognized that with only a few hundred patent examiners and about 100 trademark examiners in TIPO, it would be practically impossible to have three Examiners review each re-examination, invalidation, or revocation case if the above review or trial system (trial division) is implemented. This could also result in extended examination periods for new patent and trademark applications, which would be unfavorable to the applicants. Therefore, the above proposed amendments of the Patent Act and Trademark Act have been temporarily shelved.
- Below is the current situation of Taiwan re-examination patent cases over the past five years.
The percentage of cases rejected in the primary examination and filed for re-examination: 70.4%
| Year | Number of Re-examination Applications | Pendency time of First Office Action (months) | Duration of Decision for Re-examination (months) |
|---|---|---|---|
| 2019 | 5,076 | 10.6 | 13.4 |
| 2020 | 6,283 | 10.5 | 13.4 |
| 2021 | 6,496 | 10.3 | 13 |
| 2022 | 6,426 | 11.4 | 13.7 |
| 2023 | 5,538 | 10.1 | 13.1 |
- To speed up the re-examination of a patent application, TIPO has decided to implement an Accelerated Examination Program for Re-examination (AEPRe) starting September 1, 2024 on a trial basis. This AEPRe pilot program has adopted the concept of pre-examination process. If a request for re-examination is made by deleting the rejected claims (or dividing them) or by rewriting the non-rejected dependent claims into independent claims, the first office action or decision on the re-examination application shall be issued within six months.
- The main content of the AEPRe program is as follows:
Applicable condition
An invention patent application has been rejected in the primary examination phase, merely due to part of the claims are not patentable, and a petition of re-examination is then submitted by the Applicant.
Time of filing
After a petition of re-examination is filed with the required documents, TIPO will notify the Applicant that a re-examination will be conducted soon. Then, the Applicant can request for AEPRe, before TIPO issues the first office action.
Receiving the notification from TIPO to conduct a re-examination > Duration of Possible Filing AEPRe > Receiving the first office action from TIPO
Necessary amendments on the Claims
1. Deletion of the rejected claims being lacking patentability in the primary examination decision.
2. For the dependent claims that are not rejected in the primary examination decision, redrafting them into independent claims, with the adjustment on the numbering and dependency relations, and addition of new dependent claims.
Official fee
None.
Result
For a Re-examination application filed with AEPRe request meeting the above requirements, the first re-examination OA or decision shall be issued within six months.
- Although TIPO has not explicitly stated in the AEPRe program, yet if the Applicant does not wish to delete the claims rejected in the primary examination phase, the Applicant may consider to file a divisional application in the re-examination phase. Namely, dividing the rejected claims into a separate application (divisional application) to be proceeded also in the re-examination phase, while retaining the non-rejected claims in the parent application. The Applicant can then apply a request of AEPRe for the parent application to quickly obtain the patent rights for those non-rejected claims.
- The above AEPRe accelerated examination program for an invention patent application in the re-examination phase will be implemented starting from September 1, 2024.
