The patent prosecution highway (PPH) pilot program between the Taiwan Intellectual Property Office (TIPO) and the USPTO became effective on September 21, 2011 and will last for a trial period of one year. Under this program, applicants may obtain corresponding patents faster and more efficiently.
An applicant intending to request participation in the PPH program in the TIPO must note the following:
(1) Only an invention patent application is eligible. Utility model and design patent applications do not qualify.
(2) The Taiwanese application must validly claim priority to a corresponding U.S. application or a PCT application designating the U.S.
(3) The Taiwanese application must have been laid-open for public inspection; the applicant must have received notification from the TIPO that substantive examination is to begin soon; and the TIPO has not issued the first examination opinion.
(4) No official fee is required. However, if early laying-open of an application is requested simultaneously with the filing of the PPH request, an early laying-open fee is payable.
(5) If the time limit within which voluntary amendments may be made to the Taiwanese application has expired when participation in the PPH program is requested, the applicant is required to indicate in the PPH request form an intent to make voluntary claim amendments. The TIPO will accordingly notify the applicant by telephone to submit claim amendments.
(6) While a Chinese translation is not required for any supporting document filed at the TIPO, the responsible Examiner may so require if deemed necessary.
(7) The International Preliminary Examination Report issued by the USPTO cannot serve as a basis for requesting PPH.
If an invention patent application is not eligible for participation in the PPH program (e.g., the first examination report has been issued and the application is still under examination), the applicant may instead take advantage of the Accelerated Examination Procedure (AEP) available since last year.
On the other hand, if AEP has been requested, the applicant may still request participation in the PPH program, provided the application is eligible, and the application will be examined under the PPH program.
However, if AEP and PPH are requested at the same time, the TIPO will only process the PPH request unless the applicant has indicated otherwise.
As there is a stringent requirement that the claims in the Taiwanese application sufficiently correspond to those indicated to be allowable in the U.S. counterpart for PPH, in principle, the TIPO’s examination of PPH cases would be faster.
The launch of the PPH program is indeed good news for applicants that seek patent protection in both Taiwan and the U.S., particularly considering the averagely long time it takes for the TIPO to issue the first examination opinion. Applicants may now avail themselves of the benefits of the PPH program to advance prosecution of claims in invention patent applications filed in Taiwan based on allowable claims in U.S. counterparts.