In recent years, the Taiwan Intellectual Property Office (TIPO) has been dedicated to accelerating the examination speed for invention patent applications in response to an increasing demand from the applicant for quicker patent protection.
To facilitate the examination process, the TIPO, among others, is introducing a new type of accelerated examination process for reexamination cases, i.e. Accelerated Examination Procedure for Reexamination (AEP-Re), effective from September 2024.
Under Taiwanese Patent law, the examination process for invention patent applications has two stages: the preliminary examination stage (hereunder referred to as Pr-Ex stage) and the re-examination stage (hereunder referred to as Re-Ex stage). After a request for substantive examination is filed, the application will enter the Pr-Ex stage. If the TIPO finds any reasons for rejection/objection, it will issue an official letter notifying the applicant of the tentative reasons for rejection/objection (non-final rejection), allowing him to file a response and amendments. If there are no grounds for rejection/objection, TIPO will issue a notice of allowance. Provided that the applicant’s response and amendments fail to dispel the grounds for rejection/objection, the TIPO will issue a formal office rejection to conclude the examination process at Pr-Ex stage. If the applicant is dissatisfied with the final rejection, he must file a request for re-examination within two months, providing response and amendments along with the payable government fee for re-examination.
The application will then proceeds to the Re-Ex stage and will be examined a new designated examiner. The examining process at the Re-Ex stage mirrors that at the Pr-Ex stage, where the TIPO may issue an official letter notifying the applicant of the tentative reasons for rejection/objection (non-final rejection), allowing him to file a response and amendments. When amendments of a case at the Re-Ex stage fully address all specific rejection reasons raised in the formal office rejection/objection at the Pr-Ex stage, such case should be reviewed more efficiently, with a higher likelihood of being issued a notice of allowance.
The examination at Re-Ex stage concludes with either a notice of allowance or a formal office rejection. The formal office rejection at Re-Ex stage, if issued, is final. Should the applicant be dissatisfied with such rejection, he will have no choice but to seek administrative remedies through appeal or administrative litigation.
According to the data revealed in the 2023 Annual report of the TIPO , the average time to receive the first non-final rejection at the Pr-Ex stage is 8.9 months, with an average total examination period of about 14.4 months. At the re-examination stage, the average time to receive the first non-final rejection is 10.1 months, with an average total examination period of about 13.1 months.
Subsequent to the introduction of the new process, when filing a reexamination request with grounds and amendments that either (1) delete the claims rejected in the formal rejection received at the preliminary stage or (2) simply rewrite dependent claims which no reason for rejection into independent claims, the applicant may apply for AEP-Re. The amendments may include renumbering of the claims, adjusting the dependency of claims, and adding new dependent claims, if necessary.
The AEP-Re request should be filed after receiving a notice from TIPO that the case will enter the Re-Ex stage. The applicant can file such a request merely with a statement that the amendments submitted meet the criteria for AEP-Re. No official fee is payable. If the TIPO considers that a reexamination case meets the criteria for AEP-Re, the re-examination process will be accelerated, and a notice of allowance or a non-final rejection of the Re-Ex stage (if any) will be issued within six months. If, however, the TIPO finds that the case does not meet the criteria, the applicant will be notified, and the case will proceed through the routine re-examination process.
Given that the AEP-Re is newly introduced, how it works still remains to be seen. However, considering that no official fee is payable and the process for such a request is not complicated, it is worthwhile to consider applying for AEP-Re for invention applications at the reexamination stage to obtain patent protection earlier and more quickly.