Accelerated Patent Examination Procedure and Amendment of Claims

The Taiwan Intellectual Property Office has, since January 1, 2010, adopted an accelerated examination procedure for patent applications. According to the procedure, an applicant may, after the filing of a petition for substantive examination, request expedited examination of an application based on a foreign counterpart application which has been allowed or in which a search report has been received, or based on commercial use.

In filing a request for accelerated examination, it is oftentimes necessary for the applicant to amend the pending claims to conform to those of a granted foreign counterpart. However, Article 49 of the current Patent Law stipulates that voluntary amendment of the specification or claims is not admissible fifteen months after the filing date or priority date, unless the amendment is conducted at the time of filing of a petition for substantive examination or a response to an Official action. In other words, no voluntary amendment can be conducted during the interval between the expiration of the fifteen-month period and the issuance of the first Official action. It follows that amendment to the claims to conform them to those of a granted foreign counterpart when filing a request for accelerated examination during that interval is not possible either, which is against the spirit of the accelerated examination procedure. The IPO has come to realize such inadequacy in the practice and is planning to revise the Patent Law to resolve the issue. In the interim, the IPO has announced a special administrative measure, based upon which an applicant intending to conduct a voluntary amendment during that interval may submit a statement to the IPO, manifesting his intention to file an amendment, and the responsible examiner will notify the applicant (or his agent) by telephone to conduct the intended amendment, which is generally within one or two months from receipt of the statement. With this special measure, an applicant may now conduct a voluntary amendment at the time of requesting accelerated examination any time after requesting substantive examination.

According to official statistics, examination results will be available within eighty-five days after the filing of a request for accelerated examination, showing that the procedure is an effective way of expediting patent examination. If quick acquisition of patent right is of concern, the acceleration examination procedure may be a practical option. 

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.