In another upcoming major revision, the TIPO consider loosening limitations imposed on the time period of filing a request for substantial examination in order to provide a remedy to applicants who fail to file a request for substantial examination of a patent application with the Taiwan Intellectual Property Office (TIPO) within three (3) years from the date on which the patent application was filed in Taiwan.

Specifically, the currently Article 38, paragraph 1³stipulates “A request to the Specific Patent Agency for substantive examination of a patent application for invention may be made by any person within three (3) years after the filing date of the patent application”. After the above remedy is implemented, filing a request for substantive examination of an invention patent application over a statutory time period of thirty-six (36) months (i.e. three (3) years from the date on which the invention patent application was filed in Taiwan) but within thirty-eight (38) months will still be accepted. Of course, a corresponding petition fee has to be paid in order to claim such remedy.
In addition, the currently Article 38, paragraph 2 stipulates “Where a division request is made pursuant to Paragraph 1 of Article 34 or where a patent application is converted into a patent application for invention pursuant to Paragraph 1 of Article 108, if the time period set forth in the preceding paragraph has lapsed, a request for substantive examination may be made within thirty (30) days after such request for division or conversion”. After the above remedy is implemented, after a statutory time period of thirty (30) days (i.e. from the date on which a divisional application or a converted application is filed), a request for substantive examination of the divisional application or the converted application still can be filed within two (2) months from the expiration of the abovementioned time period. Of course, a corresponding petition fee also needs to be paid in order to claim such remedy.
Please be advised that the above revision affects only Invention applications because Utility Model applications only undergo a formality examination (Article 109), and New Design applications undergo a substantive examination (Article 36 applicable mutatis mutandis under Article 142) once the filing materials are provided in full.