It Is Possible to Expedite Examination of Patent Applications in Taiwan

Taiwan's Intellectual Property Office (TIPO) has accomplished a revision of the current “Accelerated Examination Program” (AEP) and the revision will take effect from January 1, 2022. The revised AEP not only expands the scope of its application from "Related Green Energy Technology” to “Related Green Technology” but also shortens the examination time frame from nine months to six months if the claimed invention is "urgently needed for commercial practice" or if it is related to “Green Technology.”

According to the revised AEP, an AEP request can be filed under any of the following conditions:

To file an AEP request under Condition (1) or (2), the Applicant needs to submit to TIPO a copy of the Notice of Allowance or the Letters Patent issued to a foreign counterpart, as well as the allowed or granted claims in Chinese; or copies of the examination report (or Office Action) and search report (if available) along with an abridged English translation. 

When filing an AEP request under Condition 4, the applicant needs to point out which of the claims is calling for an invention in green technology and which part of the specification or drawings is supportive of the recitations of such claim. Alternatively,   the applicant may submit to TIPO any documentation that is sufficient to prove to TIPO that the invention for which accelerated examination is requested is related to green technology or is beneficial to energy conservation or carbon reduction.

Moreover, according to the statistics released by TIPO, the average number of days (calendar days) from January to October of 2021 that the applicants received TIPO’s first examination reports are as follows:

Compared with the above-indicated average number of days that TIPO issued the first examination reports, the examination time frame as regulated in the revised AEP is obviously shorter. Moreover, we assume that the actual examination time frame for applications under Condition 3 and 4 would be shorter than six months.

What’s worth further mentioning is that, when a patent application is filed in Taiwan claiming priority from a US, Japanese, Korean, Spanish, Polish, or Canadian application or a PCT application with the US, Japan, Korea, Spain, Poland or Canada specified as the designated country, the Applicant can take advantage of “Patent Prosecution Highway Program (PPH).”

TW-Support Using the PPH Agreement (TW-SUPA) also offers a basis for expediting examination of a patent application where (1) TIPO is the receiving office of the first-filed application; and (2) a corresponding second application was later filed claiming the priority of the Taiwanese application in a country which has entered into a PPH agreement with Taiwan.

The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.