08.21.2014
Recent Development of the Patent Prosecution Highway System in Taiwan
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When one or more claims of a patent application are determined to be patentable with the Office of First Filing (OFF), under the Patent Prosecution Highway (PPH), the corresponding patent application with corresponding claims filed with the Office of Second Filing (OSF) can be processed efficiently through using the search and examination results from the OFF. Not only does it save more time for patent prosecution, but it also incurs lower cost due to decrease in workload and duplication of effort among participating PPH offices. According to the PPH statistics compiled over the first half of 2014 by the Taiwan Intellectual Property Office (TIPO), the PPH applications in Taiwan have the average pendency of 4.19 months from filing the PPH request to the issuance of final decision. Clearly the PPH route is much faster compared to the average pendency, 39.8 months, for the non-PPH applications.
However, the PPH program is not applicable if the positive examination results from the Office of Second Filing (OSF) have been issued earlier than the Office of First Filing (OFF). However, whether the examination results from the OFF could come earlier is out of applicants’ control and, sometimes, beyond their expectation.
In order to tackle the disadvantage, the PPH “Mottainai” pilot program was launched in July 2011. Through the enhanced PPH system, the eight patent offices (the United States, Australia, Canada, Finland, Japan, Russia, Spain, and the United Kingdom) agreed to request advanced examination with any participating office if the first favorable examination results are issued from any patent office on a patent family member. As of July 1, 2014, the members of the PPH “Mottainai” route add up to 24 patent offices.
The Taiwan Intellectual Property Office (TIPO) has modified the original PPH pilot program to the PPH “Motainai” pilot program in line with the Japan Patent Office (JPO) and the Spanish Patent and Trade Mark Office (SPTO) respectively. Under such pilot program between TIPO and JPO or TIPO and SPTO, the accumulated examination can be requested when the examination results are made by the Office of Earlier Filing (OEF) and the Office of Later Filing (OLF) can share and utilize the examination results. In other words, the applicant can request expedited examination even though the first positive outcome is not from the Office of First Filing (OFF).
Further, if TIPO is the OFF for the patent application under the PPH System, to shorten the long examination pendency at TIPO, the applicant can file the request for the TW-Support Using the PPH Agreement (TW-SUPA) Examination Program to have the notification of responsive examination opinions issued within 6 months and the positive notification can help advance the examination procedures of the corresponding patent application through PPH. As such, it could be expected to have the patents granted (or otherwise outcome) in Taiwan, the United States, Japan and Spain within 2 years.
To further enhance the proficiency and simplify the existing PPH systems, the IP5 PPH and Global PPH programs have been implemented since January 6, 2014. When any claims in a patent application are considered patentable by any of the participating offices, the applicant can request expedited examination by sharing the positive results at any of the other participating offices.
With the great improvement of the efficiency in issuing the first examination results, some participating patent offices may usually account for a majority of world patent searches and opinions and further harmonize patent examination at other patent offices involved in the program. Likewise, some giant patent applicants may also, within a shorter period of time than now, grasp a greater amount of patents from different PPH participating patent offices. The PPH program boosting quicker accumulative value of innovation could accelerate and strengthen the growth of industrial profits, likely reshuffling current global market where some companies would arise from acquiring ever-stronger patent portfolios, while others might become marginalized.
However, the PPH program is not applicable if the positive examination results from the Office of Second Filing (OSF) have been issued earlier than the Office of First Filing (OFF). However, whether the examination results from the OFF could come earlier is out of applicants’ control and, sometimes, beyond their expectation.
In order to tackle the disadvantage, the PPH “Mottainai” pilot program was launched in July 2011. Through the enhanced PPH system, the eight patent offices (the United States, Australia, Canada, Finland, Japan, Russia, Spain, and the United Kingdom) agreed to request advanced examination with any participating office if the first favorable examination results are issued from any patent office on a patent family member. As of July 1, 2014, the members of the PPH “Mottainai” route add up to 24 patent offices.
The Taiwan Intellectual Property Office (TIPO) has modified the original PPH pilot program to the PPH “Motainai” pilot program in line with the Japan Patent Office (JPO) and the Spanish Patent and Trade Mark Office (SPTO) respectively. Under such pilot program between TIPO and JPO or TIPO and SPTO, the accumulated examination can be requested when the examination results are made by the Office of Earlier Filing (OEF) and the Office of Later Filing (OLF) can share and utilize the examination results. In other words, the applicant can request expedited examination even though the first positive outcome is not from the Office of First Filing (OFF).
Further, if TIPO is the OFF for the patent application under the PPH System, to shorten the long examination pendency at TIPO, the applicant can file the request for the TW-Support Using the PPH Agreement (TW-SUPA) Examination Program to have the notification of responsive examination opinions issued within 6 months and the positive notification can help advance the examination procedures of the corresponding patent application through PPH. As such, it could be expected to have the patents granted (or otherwise outcome) in Taiwan, the United States, Japan and Spain within 2 years.
To further enhance the proficiency and simplify the existing PPH systems, the IP5 PPH and Global PPH programs have been implemented since January 6, 2014. When any claims in a patent application are considered patentable by any of the participating offices, the applicant can request expedited examination by sharing the positive results at any of the other participating offices.
With the great improvement of the efficiency in issuing the first examination results, some participating patent offices may usually account for a majority of world patent searches and opinions and further harmonize patent examination at other patent offices involved in the program. Likewise, some giant patent applicants may also, within a shorter period of time than now, grasp a greater amount of patents from different PPH participating patent offices. The PPH program boosting quicker accumulative value of innovation could accelerate and strengthen the growth of industrial profits, likely reshuffling current global market where some companies would arise from acquiring ever-stronger patent portfolios, while others might become marginalized.
