On 1st July 2013 the Taiwan Intellectual Property Office (TIPO) enacted the new version of the TW-Support Using the Patent Prosecution Highway (PPH) Agreement Examination Programme in order to encourage patent applicants in Taiwan to use the PPH programme.
Through a PPH agreement, an applicant whose application is under examination by the office of first filing may file the corresponding application with the office of second filing to be reviewed in advance, while the office of second filing may have access to and examine the results made by the office of first filing. TIPO signed PPH agreements with the US Patent and Trademark Office on 1st September 2011 and the Japan Patent Office on 1st May 2012. The support programme has been enacted because TIPO wants to ensure that the advantages provided by the two PPH agreements may be fully exploited.
TIPO enacted the trial version of the support programme on 1st March 2012, and this was in force for more than one year. Based on the results during that period, TIPO modified the trial version to form the new version of the support programme. The modifications affected two areas:
- TIPO has reduced the number of documents required to apply for examination under the support programme by removing the requirement that applicants must provide at least two prior arts that are closest to the invention at issue, as well as submitting reasons why the invention at issue is patentable (despite the presence of these prior arts).
- TIPO has removed the limits on both the number of requests of support programme examinations that it will accept each month and the number of requests that an applicant may file each year.
In order to apply for examination under the new support programme, four requirements must be met:
- The application is a Taiwanese invention which forms the base for international priority by a corresponding foreign application, and the corresponding foreign application was filed in a patent office which has a PPH agreement with TIPO.
- The applicant has filed a request for examination under the support programme with TIPO within six months of filing the corresponding foreign application.
- The applicant has been notified that a substantive examination for the application will begin shortly, but a first examination report on the application has not been issued.
- The application has been published before filing with the support programme; if not, the applicant must request that its application be published early pursuant to Article 37(2) of the Patent Act.
The documents required for requesting examinations under the support programme include:
- A request form that indicates the patent application.
- Information regarding the corresponding foreign application.
- Proof of filing the corresponding foreign application.
The fee for requesting examination under the support programme is NT$4,000 (approximately US$135).
If an application has complied with all of the above requirements, a notification including an examination opinion, final notice or decision of examination will be issued within six months. The actual time of issuance will vary based on the technical field of the invention at issue. In addition, the filer of any application that does not fulfil the requirements will be notified in order to amend the request.
TIPO expects that the simplified support programme will further support patent acquisition through the PPH agreements and promote international work sharing.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.