Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

How to expedite patent examination in Taiwan

Sponsored by

saint-island-400px.png
markus-winkler-afw1hht0nss-unsplash-1.jpg

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

 

 

 

 

 

 

 

 

 

 

 

 

more from across site and ros bottom lb

More from across our site

Counsel are eying domestic industry, concurrent PTAB proceedings and heightened scrutiny of cases before institution
Jack Daniel’s has a good chance of winning its dispute over dog toys, but SCOTUS will still want to protect free speech, predict sources
AI users and lawyers discuss why the rulebook for registering AI-generated content may create problems and needs further work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
A technical effect must still be evident in the original patent filing, the EBoA said in its G2/21 decision today, March 23
Brands should not be deterred from pursuing lookalike producers, and an unfair advantage claim could be the key, say Emma Teichmann and Geoff Steward at Stobbs
Justice Mellor’s highly anticipated ruling surprised SEP owners and reassured implementers that the UK may not be so hostile after all
The England and Wales High Court's judgment comes ahead of a separate hearing concerning one of the patents-in-suit at the EPO
While the rules allow foreign firms to open local offices and offer IP services, a ban on litigation and practising Indian law could mean little will change
A New York federal court heard oral arguments this week in a copyright case pitting publishing giants against a digital library