In addition to applications for acceleration of examination of invention patents through the “Accelerated Examination of Program” (AEP) or the “Patent Prosecution Highway” (PPH), the Taiwan Intellectual Property Office (TIPO) began accepting applications for deferment of substantive examination of invention patent applications from April 1, 2015. The reasons stated by the TIPO on why it accepts deferment applications includes the consideration of patent applicants' application tactics, facilitating applicants' global patent layouts, and timeframes of commercialization of inventions. Such deferment application is considered helpful in alleviating the TIPO's pressure on patent examination.
According to the new regulations, deferment of substantive examination of an invention patent application can be requested “at the same time of requesting substantive examination or thereafter but, in any case, should not be later than 3 years after of the application was filed.” For applications which claim priority, the first date for calculation of the statutory time limit is still the date on which the application concerned is filed with the TIPO.
Conditions in which an application for deferment of substantive examination shall not be granted are as follows:
- An office action or a decision regarding whether a patent should be granted to the application has been issued by the TIPO;
- A divisional patent application has been filed with the TIPO;
- Request for substantive examination has been filed by a third party;
- A request for acceleration of examination through the “Accelerated Examination of Program (AEP)” or “Patent Prosecution Highway (PPH)” has been filed with the TIPO.
Other relevant stipulations include: Filing an application for deferment of substantive examination shall not change the date of the IPO's publication of the invention under patent application. Such application for deferment can be withdrawn; after withdrawal, the applicant will not be allowed to apply for deferment again.
An important point to note is that an applicant who applies for deferment of substantive examination has to designate a specific date (YYYY/MM/DD) for the TIPO to resume substantive examination. The date can be changed by submitting a written application but, in any event, must be within 3 years of the filing of the patent application.
Under current practice, the statutory time limit for “requesting substantive examination of an invention patent application” is “within 3 years of the filing of the patent application”; according to the new regulations, though, one can apply for deferment of substantive examination after a request for substantive examination has been filed, and he/she has to designate a date which falls within 3 years of the filing of the patent application for the TIPO's resumption of substantive examination. From the perspective of patent management, compared with filing a request for substantive examination at the last day of the 3-year statutory time limit, the benefit from filing a request for substantive examination first and then applying for deferment of substantive examination to, for example, the last one or two day of the statutory time limit seems only to prevent a third party (such as a competitor) from initiating the substantive examination procedure. It remains to be seen how invention patent applicants apply such tool for deferment of substantive examination after the new regulations go into effect.