To Accelerate the Examination on an Invention Patent Application in Taiwan

There are four different ways to accelerate the examination on an invention patent application in Taiwan.

1. To file a request letter with Taiwan Intellectual Property Office (TIPO, the Patent Office) for acceleration on the examination of an invention patent application.
   As there is no any legal grounds for such a request, the applicant may, on his own grounds, petition to the Examiner for an earlier examination on his patent application, yet upon the discretion of the Examiner, the Examiner may ignore such petition if it is deemed as groundless for such petition.

2. To file a preferential examination request with TIPO on a patent application based on that the invention was enforced commercially by a third party or on an invalidation trial if patent infringement litigation is involved.
   Where, after laid-open of an invention patent application in Taiwan, a third party who has enforced the invention commercially, the applicant may file a request with TIPO to make a preferential examination on an invention patent application. Also, for an invalidation trial, if it is related to the patent infringement litigation, the party concerned may also request TIPO to conduct a preferential examination on the invalidation trial as well. In order to file such a preferential examination request, the supporting evidentiary documents are needed and per the practice, TIPO will issue within about ten (10) months an Office Action (OA) to the said patent application or invalidation trial.

3. To file an Accelerated Examination Program (AEP) in Taiwan
   Starting from January 2010, TIPO has enforced AEP in Taiwan to accelerate the examination on a patent application based on the following three Categories:
   1. Category 1- If the corresponding foreign patent application (in any country of the world) has been allowed after a foreign patent office has conducted a substantive examination thereon. No official fee is needed. In general, the processing time will be about 6 months.
   2. Category 2- If the corresponding foreign patent application (in USPTO, JPO or EPO) is still pending but OA and search report has been issued. No official fee is needed. In general, the processing time will be about 6 months if the claims in the corresponding foreign application are the same with the claims as contained in the Taiwanese application; about 9 months if the claims in the corresponding foreign application and the claims in Taiwanese application are different.
   3. Category 3- If the invention is required for Commercial Practice, an AEP may be filed by submitting the supporting business enforcement evidentiary documents and Official fee of NT$4,000. In general, the processing time will be about 9 months.
      As to the statistics on the number of AEP filed, processing time until the first OA issued and the corresponding foreign patent cited, please refer to the attached tables.

4. To file a Patent Prosecution Highway (PPH) in Taiwan.
   Taiwan has signed PPH with the following three countries:
   1. USA – Starting from September 1, 2011 for a trial period of one year.
      Formal program enforced as from September 1, 2012
   2. Japan – Starting from May 1, 2012 for a trial period of two years.
   3. Spain – Starting from October 1, 2013 for a trial period of two years.
      
      For a Japanese applicant, if he wishes to file a PPH with TIPO, the requirements are:
   1. The Taiwanese patent application has been laid-open in the Official Gazette;
   2. The Taiwanese patent application has not been issued any official action;
   3. The priority of the Japanese patent application (or PCT application designating Japan) has been claimed.
   4. The corresponding Japanese (or PCT) application has been allowed with at least one claim; and
   5. When filing a PPH with TIPO, the Taiwanese patent application must contain at least one claim which was allowed in the corresponding Japan or PCT application. Namely, the Taiwanese patent application must contain corresponding claims with same scope or a scope smaller than that in Japan or PCT application.

Table 1: 2012 Statistics on AEP filed in Taiwan

Table 2: 2012 Average Days for TIPO to Issue a first OA for AEP

Table 3: 2012 Statistics on the Corresponding Foreign Applications Claimed for AEP Applications Filed with TIPO

Table 4: 2012/7-2012/12 Statistics on PPH Applications Filed in Taiwan