Speeding things up in Taiwan
To facilitate the prosecution of patent applications in Taiwan, the Taiwan Intellectual Property Office (TIPO) has put in place the so-called Accelerated Examination Program (AEP), which allows an applicant to voluntarily submit examination opinions already issued in counterpart foreign applications.
Like the Patent Prosecution Highway (PPH) initiatives currently implemented by many foreign patent offices, one purpose of the AEP is to exploit relevant work already conducted by other patent offices in order to reduce the burden of search and examination in Taiwanese applications.
Recently revised in January 2010 after a trial period of one year, the current AEP distinguishes three different scenarios under which accelerated examination can be requested in an application for an invention patent: a counterpart foreign application has already been allowed, an official notice of rejection has been issued in a counterpart foreign application that is not yet allowed and there is a need for commercial practice of the patented subject matter by the applicant.
This article will examine these different scenarios and discuss certain features of the AEP that are distinctive from other PPH programmes.
Counterpart foreign applications
If a counterpart foreign application has been permitted, the applicant can request accelerated examination of the Taiwan application by submitting a copy of the notice of allowance and all examination opinions issued in the foreign application. If the foreign application has already been granted a patent, a copy of the foreign patent can substitute for the notice of allowance.
In addition, applicants must provide a translation in Chinese of the claims allowed in the foreign application. If the foreign claims differ from those pending in the Taiwan application, TIPO also requires the applicant to submit a clarification of the differences.
In addition to the aforementioned documents, the applicant may also submit any responses, amendments and relevant filings made in the foreign application that can facilitate the examination in Taiwan.
Once the request form and all requisite documents have been duly filed, TIPO will issue a notice of rejection or final decision in the Taiwan application within six months.
Notice of rejection
If the counterpart foreign application is in a more advanced stage of examination, the applicant can also request accelerated examination in Taiwan, based on at least a first notice of rejection and the relevant search report issued in the counterpart foreign application.
In addition to the examination opinion and search report, a Chinese translation of the claims subjected to examination in the foreign application is also required. If the claims rejected in the foreign application differ from the claims currently pending in the Taiwan application, the applicant must also clarify the differences between the claims.
“The AEP may be particularly valuable for applicants who want to draw Taiwan applications into a faster examination track as soon as favourable examination results are available in counterpart foreign jurisdictions.”
It is worth noting that under this second scenario, the current AEP only accepts requests that are based on examination opinions issued by the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO) and the Japan Patent Office (JPO).
International preliminary examination reports, even if conducted by any of these foreign patent offices, are not accepted. Moreover, if the notice of rejection issued in the foreign application includes prior art references that are detrimental to the novelty and/or inventive step requirements, the applicant must indicate the reasons why the claims pending in the Taiwan application are clearly distinguishable from these prior art references.
After the request form and all requisite documents are filed, the AEP prescribes a period of six months for TIPO to issue a notice of rejection or final decision on the Taiwan application.
Need for commercial practice
In addition to the aforementioned scenarios, the applicant for an invention patent in Taiwan can also request accelerated examination should the applied for patent be necessary for commercial practice. In this case, there is no need for the examination opinions of counterpart foreign applications.
Instead, the applicant should submit documents that demonstrate the commercial practice, such as licensing contracts, advertisement catalogues and photographs of commercial embodiments covered by the Taiwan application.
It is worth noting that Article 39 of the Taiwan Patent Act already permits an applicant to request “preferential examination” if the subject matter of the applicant’s patent is in use by a third party. The AEP differs from the provision of Article 39 in that it allows applicants to request an accelerated examination when the patented subject matter is practised by the applicant himself, rather than by a third party.
Because no examination opinion discussing patentability issues is required, the AEP sets forth a longer period of nine months for TIPO to issue a notice of rejection or final decision under this third scenario.
Requesting accelerated examination
The applicant can file a request for accelerated examination only after TIPO has issued the notice of entry in the examination stage or the notice of entry in the continued examination stage (i.e. the application goes for another round of examination with another examiner after having been rejected in a first round). This time frame applies regardless of whether the request is filed under any of the three scenarios discussed above.
Provided that it complies with the above timing and includes all the requisite documents, the AEP does not restrict the number of requests that can be filed, for example, when submitting updated examination opinions made by foreign patent offices.
Moreover, a request can be filed even when a notice of rejection is pending in the Taiwan application. In this case, as well as the necessary filings for the request, the applicant still has to submit a substantive response that addresses the issues raised in the pending notice of rejection.
Analysis
Compared to other current PPH programmes, the AEP adopts a more open approach, which allows the applicant to use the fast examination track anytime after entry into the examination stage, even after a first notice of rejection is issued in the Taiwan application. As a result, the AEP may be particularly valuable for applicants who want to draw Taiwan applications into a faster examination track as soon as favourable examination results are available in counterpart foreign applications.
Another distinctive feature of the AEP is the ability to request fast examination for commercial purposes. This option should be of particular interest to companies in fast-moving technologies or involved in cross-licensing negotiations, particularly agreements involving large numbers of patents and products.
Nevertheless, certain aspects still need further work. For example, while allowance in any counterpart foreign applications can be relied on to trigger accelerated examination in the Taiwan application, only work generated from a few patent offices is actually permissible if the counterpart foreign application is still pending. This dual standard raises the question as to what is considered ‘reliable examination work’ under the current AEP.
Moreover, should accelerated examination be requested under the second scenario, the current procedure may also require the applicant to elaborate arguments addressing patentability issues in the Taiwan application. While TIPO has not issued any related rejections, such a submission may give rise to adverse admissions in the prosecution history.
Conclusion
While the current AEP generally offers advantages in terms of faster prosecution in Taiwan applications, related issues should still be adequately assessed on a case-by-case basis.
Joy Pan is senior partner at Baker & McKenzie in Taipei. She can be contacted at: joy.pan@bakermckenzie.com
Grace Shao is a partner at Baker & McKenzie in Taipei. She can be contacted at: grace.shao@bakermckenzie.com
