Accelerated Examination Programme
A number of patent offices worldwide have begun using the Patent Prosecution Highway in order to reduce the heavy examination workload of patent offices and improve the quality of patent examination generally. The Patent Prosecution Highway is a set of initiatives to provide accelerated patent examination procedures through information sharing between patent offices, allowing each participating patent office to benefit from the work previously performed by other patent offices.
Although the Taiwan Intellectual Property Office (TIPO) has not yet joined a Patent Prosecution Highway agreement, in order to improve the efficiency of patent prosecution and the quality of patent examination in Taiwan, on 1st January 2009 the TIPO began offering the Accelerated Examination Programme to applicants in Taiwan as a means of alleviating the growing volume of patent applications. During the one-year trial and observation period, the acceleration programme received widespread support from patent prosecution practitioners. After fixing some minor issues, on 1st January 2010 the TIPO formally commenced use of the Accelerated Examination Programme.
An applicant can now apply to speed up patent examination by providing an examination report or official action response received for a corresponding application in another jurisdiction. For example, if the US Patent and Trademark Office or the European Patent Office processes a corresponding application in that jurisdiction before the TIPO processes the Taiwanese application, the applicant can now submit the relevant documents to the TIPO and request the latter to provide its opinion within three months. Therefore, this new process can be used by applicants that wish to accelerate the TIPO examination procedure.
New fee structure for patent prosecution
The TIPO has recently been working on a reform of the patent examination fee structure and it has now announced amendments to the official fees. The new fee structure took effect on 1st January 2010 and applies to patent applications filed on and after such date. The annuity fees have also been adjusted and apply to all applications. The TIPO indicated that the new fee structure will more properly reflect the costs of patent examination based on the actual amount of work required for an application.
Instead of a fixed fee, the new examination fee is calculated based on the number of claims. The basic fee will be NT$7,000 (NT$1,000 less than the previous fee), but the TIPO will charge NT$800 for each claim over 10 claims. Therefore, for patent applications incorporating fewer than 12 claims, the new fee charged by the TIPO is similar to the fee charged under the previous fee structure.
The annual fees for maintaining a granted patent have been reduced and are shown below.
|Type of patent||Item of annual fee||Previous official fee (NT$)||Official fee effective as of 1st January 2010 (NT$)|
|Invention patent||Seventh year to ninth year (each year)||9,000||8,000|
|After 10th year (each year)||18,000||16,000|
|Utility model patent||Fourth year to sixth year (each year)||5,000||4,000|
|Seventh year to ninth year (each year)||9,000||8,000|
|10th year (each year)||18,000||8,000|
|New design patent||Fourth year to sixth year (each year)||5,000||3,500|
|Seventh year to ninth year (each year)||9,000||5,000|
|10th year to 12 year (each year)||18,000||5,000|
Considering the decease in annuity fees (for the seventh to ninth years, a reduction of NT$1,000 a year compared to the previous fee structure, and after the 10th year a deduction of NT$2,000 a year), for a patent application with 30 claims and including the payment of annuity fees for 15 years, the total official fee for obtaining and maintaining such a patent in Taiwan is the same under the new fee structure as under its predecessor.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.