ALIPO IP ATTORNEYS

Starting January 1, 2010, TIPO began accepting requests for the Accelerated Examination Program (AEP), revised from its earlier pilot version launched January 1, 2009, to allow for more flexibility in the program while taking into account applicants’ rights and interests.

In observance of the user-pays principle, applicants requesting AEP on and after July 1, 2011, are required to pay AEP request fees as stipulated in Condition 3.

To encourage green technology development, TIPO added Condition 4, stipulating that applicants requesting AEP on and after January 1, 2014, pay AEP request fees.

Having been notified by TIPO that their invention application will soon be undergoing substantive examination or re-examination, the applicant whose invention application meets one of the following conditions may proceed to request AEP with relevant documents, regardless of whether such application has undergone substantive examination or re-examination.

A. The Four Conditions

Condition 1: The corresponding application has been approved by a foreign patent authority under substantive examination

The so-called “corresponding foreign application” (or foreign counterpart) is one belonging to the same patent family as the TIPO application and whose priority may or may not have been claimed in Taiwan. Such affinity is determined upon whether the claims of the patent application have been disclosed in the specification or drawings of its foreign counterpart.

The applicant requesting AEP under Condition 1 should provide all of the OAs and, if any, search reports issued prior to the approval of the foreign counterpart of the patent application.

The required documents include:

a. A copy of the AEP request form;

b. A copy of the approved patent claims issued by a foreign patent authority (with Chinese translation), or a copy of notice of allowance and to-be-published patent claims issued by a foreign patent authority (with Chinese translation);

c. All of the OAs and, if any, search reports issued by a foreign patent authority; a summary in Chinese must be provided alongside these documents written in languages other than Chinese or English;

d. An explanation of differences, if any, between the Chinese translation of the claims in “b” and those in the application filed with TIPO (please refer to B. Format 1, Example 1); if there are no differences, the applicant should tick the box “not different” on the request form;

e. A copy of non-patent literature indicating (as in “c”) the foreign counterpart’s failure of compliance with the novelty or inventive step requirements (patent literature not required); With regard to the required documents, those mentioned in “a”-“c” must be provided; as for “d,” no explanation is needed in the absence of differences;  with respect to “e,” no non-patent literature is required if there is no failure of compliance. In addition, the applicant may provide any documents that may expedite the examination process (e.g. a written reply to a foreign patent authority or reasons for patentability of the pending TIPO application, regarding which the citations indicate its foreign counterpart’s failure of compliance with the novelty and/or inventive step requirements).

Unlike other foreign patent authorities running PPH where accelerated examination requests (similar to Condition 1) are restricted to patent applications that have not begun examination (i.e. the applicant not having received an OA from the patent authority), TIPO accepts AEP requests for all applications that are in the process of undergoing examination. It should be noted that the applicant having narrowed patent claims in accordance with the OA issued by TIPO may not request AEP using a foreign application whose claims have been approved by a foreign patent authority and are broader in scope than the one with narrower claims.

Generally, the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 6 months after all the relevant documents have been received. The actual examination pendency, however, may vary depending on the technical field(s) of respective cases.

Condition 2: The EPO, JPO or USPTO has issued an OA during the substantive examination but has yet to approve the application’s foreign counterpart

The applicant requesting AEP should provide at least the first OA (issued by the EPO, JPO, or USPTO) and the EPO’s European search report, or the PCT-designated International Search Report (ISR) from the EPO, JPO, or USPTO.

The required documents include:

a. A copy of the AEP request form;

b. A copy of patent claims based upon the OA issued by the EPO, JPO, or USPTO (with Chinese translation);

c. A copy of the OA and search report issued by the EPO, JPO or USPTO; all of the OAs and, if any, a search report issued by a foreign patent authority; a summary in Chinese must be provided alongside these documents written in languages other than English;

d. An explanation of differences, if any, between the Chinese translation of the claims in “b” and those in the application filed with TIPO (please refer to B. Format 1, Example 1); if there are no differences, the applicant should tick the box “not different” on the request form;

e. The applicant should provide reasons for patentability of the pending TIPO application (please refer to B. Format 2, example 2), with respect to citations in the OA or search report (as mentioned in “c”) indicating its foreign counterpart’s failure of compliance with the novelty and/or inventive step requirements;

f. A copy of non-patent literature containing citations as mentioned in “e” (patent literature not required); With regard to the required documents, those mentioned in “a”-“c” must be provided; as for “d,” no explanation is needed in the absence of differences; where “e” and “f” do not apply, the documents stipulated therein need not be supplemented. In addition, the applicant may provide any documents that may expedite the examination process (e.g. a written reply to a foreign patent authority or subsequent OAs).

The pendency for TIPO’s issuing examination results for an AEP request made under Condition 2 may vary depending on the following: If there is no difference between the pending TIPO application and its foreign counterpart (the “not different” in “d”), the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 6 months after all the relevant documents have been received. In case there are differences, the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 9 months after all the relevant documents have been received. The actual examination pendency, however, may vary depending on the technical field(s) of respective cases.

Condition 3: The invention application is essential to commercial exploitation

The applicant whose invention has been put into practical use (e.g. commercial exploitation) may request AEP to ascertain its patentability at the earliest. The applicant requesting AEP under Condition 3 should provide a copy of the AEP request form, proofs of evidence indicating the invention’s commercial exploitation (e.g. licensing agreements, marketing brochures, and commercial catalogs), and make a payment of NT$4,000 (per request).

In principle, the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 9 months after all the relevant documents have been received. The actual examination pendency, however, may vary depending on the technical field(s) of respective cases.

Condition 4: Inventions related to green technologies

The applicant whose invention involves green technologies may request AEP to ascertain its patentability at the earliest. The applicant requesting AEP under Condition 4 should provide a copy of the AEP request form together with a written explanation indicating the connection between the invention and green technologies (please refer to B. Format 3, Example 3), and make a payment of NT$4,000 (per request).

In Taiwan, green technology areas cover both the WIPO’s definition for areas of alternative energy technology and the green industries referred to under the Executive Yuan’s “Rising Green Energy Industry Project” and “National Energy Plan.” The applicant whose inventions involve the following may request AEP:

(1) Technologies for improving energy conservation and for developing new sources of energy, or renewable energy vehicles; or
(2) Technologies for carbon reduction and resource saving.

The applicant requesting AEP must make sure that the claims of the invention directly relate to the aforementioned green technology areas recognized in Taiwan. To this end, the applicant may provide documents of proof (e.g. specification or drawings).

Generally, the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 9 months after all the relevant documents have been received. The actual examination pendency, however, may vary depending on the green technology field(s) of respective cases.

Applicants wishing to request AEP should visit the TIPO website and download the request form. To learn more about this program, go to the “AEP Q&A” section of the website.

B. Format

1. Explanation of differences between pending claims at TIPO and those claims filed with the foreign counterpart

Example: