Patent examination pilot programme for start-ups takes effect

Introduction
TIPO interviews
Applicants must submit response or amendments in due time
Timeframe for examination result notices
Comment

Introduction

In recent years, the government has paid greater attention to start-ups. On 14 October 2020 the Taiwan Intellectual Property Office (TIPO) announced a patent examination pilot programme for start-ups, effective 1 January 2021, under which start-ups with research and development capabilities will experience a more active and positive examination process which will enable them to better improve their patent portfolios.

According to the pilot programme, it is available to start-ups which were established less than five years before the patent filing date (or priority date, if claimed), provided that the start-up was the applicant of the invention patent concerned at the time of filing. A petition form for the pilot programme may be submitted online with TIPO after start-ups receive official notice that TIPO is about to conduct a substantive examination of the invention patent and prior to receipt of the first office action.

Where applicants comply with the abovementioned requirements, TIPO will apply the pilot programme to its examination. The specific steps are summarised as follows.

TIPO interviews

Within one month of the filing of a pilot programme application, TIPO will:

• provide applicants with interview materials, including a search report and a brief summary of its opinions on the reasons for not granting a patent; and
• arrange an interview with the applicant.

In principle, interviews will be held within one month of the applicant's receipt of the interview materials. In the interview, TIPO will not only inform applicants of the reasons for not granting a patent, but also provide constructive suggestions on amendment.

Applicants must submit response or amendments in due time

Applicants must submit their response or amendments within one month of the interview. If applicants fail to submit their response or amendments in due time, the examination will be continued on the basis of the existing file under the general examination procedure.

Timeframe for examination result notices

In principle, if applicants submit their response or amendments within the designated period, within one month of receipt of the same, TIPO will issue a notice of the examination result, including the decision to grant or an office action.

Comment

The pilot programme reduces the wait time for first office actions from an average of 12 to 18 months to one month.

However, the pilot programme has a trial period of a mere six months and is limited to 30 cases. TIPO will evaluate whether to continue or amend the programme based on the results. Start-ups should take the above information into consideration to formulate patent portfolio plans that are the most beneficial to the development of their enterprises.

For further information on this topic please contact Hsiu-Ru Chien and Elina Yu at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email (hrchien@leeandli.com or elinayu@leeandli.com). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.