Implementation plan for expedited examination of invention patent applications - International Law Office

In addition to the Patent Prosecution Highway pilot programme between the Taiwan Intellectual Property Office (TIPO) and the US Patent and Trademark Office (USPTO) as of January 2010, TIPO has been implementing the Implementation Plan for Expedited Examination of Invention Patent Applications. Under this plan, an applicant may apply for expedited examination of its application, based on any of the following reasons:

• A corresponding foreign patent application has been allowed through substantive examination;
• A corresponding foreign patent application filed with the USPTO, the Japanese Patent Office or the European Patent Office has not been allowed through substantive examination, but office actions and search reports have been issued therefor; or
• There is a need for expedited examination due to commercial reasons.

In principle, for a request filed based on the first reason TIPO may issue an examination notification (an office action or decision) within six months of the submission of all required documents for such expedited examination.

For a request filed based on the second reason, TIPO may issue an examination notification within six months (where the claims of the foreign case and the Taiwanese case are identical) or nine months (where the claims of the foreign case and the Taiwanese case are different) of submission of all required documents.

In case of an expedited examination request filed based on the third reason, TIPO may issue an examination notification within nine months of submission of all required documents. However, the actual examination time needed will depend on the technology involved. According to TIPO statistics, from January to November 2011 a total of 1,273 requests for expedited examination were filed with TIPO. Among these requests:

• 416 were filed by domestic applicants and 656 by foreign applicants based on the first reason;
• seven were filed by domestic applicants and 20 by foreign applicants based on the second reason; and
• 157 were filed by domestic applicants and 17 by foreign applicants based on the third reason.

For further information on this topic please contact Daisy Wang at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300), fax (+886 2 2713 3966) or email (daisywang@leeandli.com).