Previously in Taiwan, expedited substantive examination of an invention patent application was generally limited to filing a reminder with the Intellectual Property Office of Taiwan (TIPO) or seeking administrative remedies when substantive examination has taken longer than the time limits set by TIPO. Another approach is to request TIPO to effect the examination on a priority basis; however this requires evidence of a third part practicing the published invention for commercial purposes. Therefore, since January 1, 2009 a new procedure has been available to applicants.
On January 1, 2009 TIPO began a one-year trial of the Accelerated Examination Program (AEP). At the end of 2009, TIPO evaluated the results of the trial AEP. In 2009, 893 applications for AEP were requested, of which 532 cases were from domestic applicants and 252 cases were from overseas applicants (90 cases handled by Tai E). The first examination results were received after 52.5 days on average. Therefore, TIPO formalized and expanded AEP to accept two more kinds of eligible invention applications from January 1, 2010.
In 2009, eligible invention applications were limited to Taiwanese invention patent applications that are under substantive examination in the primary examination or re-examination stage, where the corresponding foreign application had been substantively examined and allowed. Currently, if the examination opinions (and search report, if applicable) of the corresponding foreign application have been issued by the USPTO, JPO or EPO, but the application has not been allowed yet, the Taiwanese counterpart also will be eligible for AEP. Furthermore, if the invention claimed in a Taiwanese invention patent application is essential to and has been practiced commercially, the Taiwanese application also will be eligible for AEP.
In principle, TIPO will render examination results within 9 months at the latest after the application form and necessary documents are submitted in full. The actual examination time may vary and depends on the technical field to which the invention patent application relates. The contents of the formalized AEP are summarized below.
I. Applications
AEP is applicable to Taiwanese invention patent applications once TIPO has notified the applicants that they are going start substantive examination or re-examination, where one of the following conditions is met:
Condition 1: The foreign application corresponding to the invention patent application has been substantively examined and allowed.
Condition 2:The examination opinions (and search report, if applicable) of the corresponding foreign application have been issued by the USPTO, JPO or EPO, but the application has not been allowed yet.
Condition 3: The invention claimed ina Taiwanese invention patent application is essential to what the applicant puts to practice for commercial purposes.
The corresponding foreign application in conditions 1 and 2 should disclose the invention claimed in the Taiwanese invention patent application and have undergone substantive examination. The foreign patent office in condition 1 is not limited to the offices of any specific countries.
II. Required documents
Where a request for accelerated examination is made in conformity with the provisions of the AEP, an application form must be submitted along with the following documents that are listed according to the foregoing three conditions:
Condition 1:
1. Claims allowed and published by the foreign patent office and the Chinese translation of the claims; or a copy of the notice of allowance rendered by the foreign patent office, the claims that are going to be published and the Chinese translation of the claims.
2. A copy of all official letters of examination opinions (and search reports, if applicable) rendered by the foreign patent office during substantive examination and brief Chinese descriptions for those not written in Chinese or English.
3. A copy of at least the first official letter of examination opinions (and search report, if applicable) issued by the USPTO, JPO or EPO and brief Chinese descriptions for those not written in English.
4. A copy of the non-patent literature cited in the preceding official letters against the novelty or inventive step of the corresponding foreign patent application (cited patent literature does not need to be submitted).
In comparison with the trial AEP, required documents 2 and 4 are newly added for condition 1 in the finalized AEP.
Other beneficial documents, such as the response submitted to the foreign patent office with respect to the rendered official letters, or the reasons contending the patentability in view of the literature cited against the novelty or inventive step, can be submitted simultaneously with the request for accelerated examination.
Condition 2:
1. Claims on which the examination opinions were issued by the USPTO, JPO or EPO were based and the Chinese translation of the claims.
2. A copy of at least the first official letter of examination opinions (and search report, if applicable) issued by the USPTO, JPO or EPO and brief Chinese descriptions for those not written in English.
3. A statement describing the differences between the Chinese translation of the claims and the claims pending at TIPO (if no differences exist, the statement can be omitted).
4. Reasons explaining why this application is patentable if literature was cited in the preceding official letters against the novelty or inventive step of the corresponding foreign patent application.
5. A copy of the non-patent literature cited in the preceding official letters (cited patent literature does not need to be submitted).
Other beneficial documents, such as the response submitted to the foreign patent office, or the second or subsequent official letters, can be submitted simultaneously with the request for accelerated examination.
Condition 3:
Documents that can prove that the invention claimed in Taiwanese invention patent application is essential to what the applicant puts to practice for commercial purposes, such as licensing contract(s), advertisement catalogue(s) or photograph(s) showing the product manufactured by utilizing the invention.
III. Effects
TIPO still performs independent substantive examination regardless of whether the pending Taiwanese claims are identical to the claims in the corresponding foreign patent application in Conditions 1 and 2.
In principle, TIPO will render examination results within 9 months at the latest after the application form and necessary documents are submitted in full. For Condition 1 and where the claims of the Taiwanese and corresponding US, JP or EP patent application are identical in Condition 2, TIPO even will render examination results within 6 months. The actual examination time may vary and depends on the technical field to which the invention patent application relates.
IV. Exception to applicable applications in condition 1
If TIPO has rendered an examination report to require that the applicant narrow the scope of claims and the applicant has made amendments to narrow the scope thereof, then a corresponding foreign patent of which the allowed claims have a broader scope cannot be used to request the AEP.
V. Voluntary amendments
If the claims of the Taiwanese application should be amended based on the allowed or pending claims of the corresponding foreign application, then such amendment may be constrained by the time-limit of voluntary amendments.
Based on Article 49 of the Taiwan Patent Act, a patent applicant may make an amendment to the specifications and/or drawings within fifteen (15) months from the filing date. After fifteen (15) months from the filing date, a patent applicant may make an amendment to the specification and/or drawings only on the dates or during the periods as specified below:
1. At the same time of filing an application for substantive examination;
2. Within three (3) months from the service date of a notice of substantive examination issued in respect of the patent application concerned, if the substantive examination application is filed by a person other than the patent applicant;
3. During the time limit for response as specified in a notice given by the Patent Authority prior to its written reasons for rejection of the patent application concerned; or
4. At the time of filing an application for re-examination, or during the period fixed for filing a supplemental statement of reasons for re-examination.
In most cases, the reason for requesting AEP is usually due to an excessively long wait for substantive examination results, usually longer than the 15-month time limit for voluntary amendments. In such a situation, none of the four foregoing legitimate periods for voluntary amendments can apply. Therefore, almost all the applicants who want to make voluntary amendments while requesting AEP will face such inconvenience.
Current practice is to submit a statement indicating the intention of amendment or to submit an intended amendment to TIPO and request that the examiner issues a notice to make an amendment.
In some cases, TIPO will first notify the applicant to make an amendment before they conduct the substantive examination. In this scenario, the applicants will obtain an examination result based on the claims after amendment.
However, in other cases, TIPO will directly conduct the substantive examination based on the existing claims without notifying the applicants to make an amendment. In such a scenario, the examination result is based on the original claims, which is certainly undesirable. If allowed, the requirements of amendments are very strict. If an advance notice of rejection is received, the applicant at least has a third legitimate period to make an amendment. Therefore, TIPO would still have to conduct examination based on the claims desired by the applicant. Therefore, this TIPO policy is undesirable and inefficient.
VI.Conclusion
Despite the inconveniences to amending applications and submitting more documents, the official-fee-free AEP indeed provides applicants with more opportunity to quickly obtain examination results.
(Author: Willy W. L. Juan is a patent attorney in the Tai E International Patent & Law Office. Before joining Tai E in 1996, Mr. Juan worked in the Electronics Group of the Taiwan Intellectual Property Office as a patent examiner for two and a half years. Mr. Juan holds a Master’s degree in Electronic Engineering.)
