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How to expedite patent examination in Taiwan

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Jun-yan Wu of Saint Island International Patent & Law Offices discusses the changes to Taiwan’s Accelerated Examination Programme

Taiwan's Intellectual Property Office (TIPO) has completed its revision of the Accelerated Examination Programme (AEP) for patent applications. The revisions took effect on January 1 2022.

The new AEP expands the scope of its application from “related green energy technology” to “related green technology”. It also shortens the examination time frame from nine months to six months if the claimed invention is "urgently needed for commercial practice" or is related to “green technology”.

According to the revisions, an AEP request can be filed under any of four conditions: 

 

Condition

Average examination timeframe

Condition 1:

 

When a foreign counterpart has been allowed or granted

Within six months

Condition 2:

 

When an examination report and a search report have been issued to the US, JP or EP counterpart(s)

Within nine months

Condition 3:

 

When the applicant is planning to practise a claimed invention commercially

Within six months

Condition 4:

 

When a claimed invention is related to green technology

Within six months


 

To file an AEP request under Conditions 1 or 2, the applicant needs to submit to TIPO a copy of the notice of allowance or the letters patent issued to a foreign counterpart, as well as the allowed or granted claims in Chinese, or copies of the examination report (or office action) and search report (if available) along with an abridged English translation.

When filing an AEP request under Condition 4, the applicant needs to point out which of the claims calls for an invention in green technology and which part of the specification or drawings supports the recitations of that claim. Alternatively, the applicant may submit to TIPO any documentation that is sufficient to prove to TIPO that the invention for which accelerated examination is requested is related to green technology or is beneficial to energy conservation or carbon reduction.

Data on examination

According to statistics released by TIPO, from January to October 2021 the average number of calendar days in which applicants received TIPO’s first examination reports were: 

 

Condition

Average number of days

Condition 1

57.9 days

Condition 2

91.2 days

Condition 3

94.1 days

Condition 4

61.7 days


 

The average number of days in which TIPO issued the first examination reports is shorter than the examination time frame as set out in the revised AEP. Moreover, the actual examination time frame for applications under Conditions 3 and 4 would be likely to be shorter than six months. 

PPH programme

When a patent application is filed in Taiwan claiming priority from a US, Japanese, Korean, Spanish, Polish or Canadian application or a PCT application with the US, Japan, Korea, Spain, Poland or Canada specified as the designated country, the applicant can take advantage of the Patent Prosecution Highway (PPH) programme.

TW-Support Using the PPH Agreement also offers a basis for expediting examination of a patent application where (1) TIPO is the receiving office of the first-filed application; and (2) a corresponding second application was later filed claiming the priority of the Taiwanese application in a country which has entered into a PPH agreement with Taiwan. 

 

 

Jun-yan Wu

Patent attorney, Saint Island International Patent & Law Offices

E: siiplo@mail.saint-island.com.tw

 

 

 

 

 

 

 

 

 

 

 

 

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