Under Taiwanese Patent Act, 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). In general, after a request for substantive examination is filed, the application enters the Pr-Ex stage. If Taiwan’s Patent Office (TIPO) finds reasons for rejection, it issues an official letter containing the tentative reasons for objection/rejection (non-final rejection), allowing the applicant to file a response and amendments. Otherwise, the TIPO will issue a Pr-Ex stage notice of allowance. If the applicant’s response and amendments fail to dispel the rejection grounds, the IPO will issue a formal and final Pr-Ex stage office rejection. Where the applicant is dissatisfied with the Pr-Ex stage final rejection, he may file a request for re-examination within two months, providing response and/or amendments along with the payable government fee. The application then proceeds to the Re-Ex stage and will be examined by a totally new examiner. The examining procedure at the Re-Ex stage mirrors that at the Pr-Ex stage, where the IPO may issue an official letter containing the tentative reasons for objection/rejection (non-final rejection), allowing the applicant to file a response and amendments. The examination at the Re-Ex stage concludes with either a notice of allowance or a formal office rejection. The formal office rejection at the Re-Ex stage, if issued, is final. Should the applicant be dissatisfied with such rejection, he has no choice but to seek administrative remedies through appeals or administrative litigation (please see the flowchart below).
According to the relevant data, in 2024, 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. Notwithstanding this, considering that the applicants may have the need to accelerate or defer examination in response to their changing patent strategies, the TIPO has offered several schemes for accelerating or deferring examination
I. Accelerating examination for invention applications:
There are three ways through which an invention patent application may be accelerated.
(I) Patent Prosecution Highway (PPH)，
Most of the applicants tend to file patent applications in multiple countries. Since search and examination results of the patent applications filed in one patent office of the multiple countries can be utilized and considered in another country, a Patent Prosecution Highway (PPH) program allows applicants to have their applications accelerated if they have already obtained the search and examination results from one of the patent office (Office of First Filing, OFF) and wish to benefit from the search and examination results in another patent office (Office of Second Filing, OSF). In other words, if one of the patent offices that are parties to a PPH agreement has generated an examination outcome, e.g., a notice of allowance, then the applicant can utilize the outcome as basis for filing a request for accelerated examination with another office.
In Taiwan, the PPH program has two kinds: Standard PPH and Enhanced PPH. Taiwan has a standard PPH arrangement only with the United States. However, with other countries, including Japan, Spain, South Korea, Poland, and Canada, Taiwan operates under the Enhanced PPH (PPH MOTTAINAI) program.
The PPH MOTTAINAI program relaxes the restrictions of the standard PPH which only allows the use of search and examination results from the Office of First Filing (OFF). Under the PPH MOTTAINAI program, the applicant can use the search and examination results of either the Office of First Filing (OFF) or the Office of Second Filing (OSF) from any of the patent offices that are parties to the PPH Mottainal agreement to file an accelerated examination request with another such office when the search and examination results become available.
Additionally, when requesting PPH, it is important to ensure that the claims of the Taiwan application are amended, if necessary, to fully correspond to or be narrower than the claims allowed in the foreign counterpart application on which the PPH request is based.
As for the timing of filing the PPH request: For PPH requests during the Pr-Ex stage, they must be filed after the TIPO has notified that the examination will commence but before issuance of the first examination result, eg., the Pr-Ex stage first non-final rejection. For PPH requests during the Re-Ex stage, they must be filed after the TIPO has notified that re-examination will commence but before the issuance of the first examination result, e.g., the first Re-Ex stage non-final rejection.
(II) Accelerated Examination Program (AEP) for Invention Patents
In addition to PPH requests, the applicant may also request accelerated examination under the Accelerated Examination Program (AEP) for invention patent applications if one of the following four conditions is met:
Condition 1: The corresponding foreign application has been allowed after substantive examination by a foreign patent office.
Condition 2: The corresponding foreign application has received an office action and search report from the US, Japan, or European patent offices but has not yet been allowed.
Condition 3: The invention is necessary for commercial implementation.
Condition 4: The claimed invention relates to green technologies. Green technology-related patent applications refer to: (1) Inventions involving energy-saving technologies, new energy, or new energy vehicles; and (2) inventions related to carbon reduction technologies and resource-saving technologies.
The AEP request is similar to the PPH request in that it can only be filed after receiving the TIPO’s notification that the case has entered the Pr-Ex stage or the Re-Ex stage. However, since the conditions for filing an AEP request may include commercial implementation, the applicant is permitted to file such request even after receiving the Pr-Ex-sage or Re-Ex stage first non-final rejection.
Nevertheless, if the applicant has narrowed down the scope of the claims in response to a non-final rejection, he is not permitted to broaden the scope of the claims thereafter by requesting AEP based on the 1st condition asserting that the claims allowed in the corresponding are broader.
(III) Accelerated Examination Program for Re-examination applications (AEP-Re)
The applicant may apply for AEP-Re when filing a reexamination request with grounds and amendment that either (1) delete the claims rejected in the formal rejection issued at the Pr-Re stage or (2) simply rewrite dependent claims into independent claims if no reason for rejection is raised in such formal rejection. The amendment mentioned above may include renumbering of the claims, adjusting the dependencies of claims, or adding new dependent claims, if necessary.
The AEP-Re request is allowed to be filed only after receiving a notice from the TIPO that the case has entered the Re-Ex sage. The applicant merely needs to file such request with a statement that the amendment meets the AEP-Re criteria. No official fee is payable. If the TIPO considers that a reexamination cases meets the requirement for AEP-Re, the reexamination process will be accelerated, and a notice of allowance or a Re-Ex stage non-final rejection (if any) will be issued within six months. On the other hand, if the TIPO finds that the case does not meet the AEP-Re criteria, the applicant will be notified, and the case will proceed through the normal reexamination process.
II. Deferred Examination for Inventions
In addition to the accelerated examination process mentioned above, if necessary, the applicant may request deferred examination for invention patent applications. During the Pr-Ex stage, the request must be filed after receipt of a notice from the TIPO that the case has entered the Pr-Ex stage but before issuance of the first examination result, e.g., the first Pr-Ex stage non-final rejection. Likewise, during the Re-Ex stage, the request must be filed after receiving a notice from the TIPO that the case has entered the Re-Ex stage but before issuance of the first examination result, e.g., the first Re-Ex stage non-final rejection.
To request deferred examination, the applicant must designate a specific date for resumption of substantive examination. However, whether at the Pr-Ex stage or the Re-Ex stage, the resumption date can be no later than three years from the filing date of the application. Furthermore, if a third party requests substantive examination, or if the applicant has already requested PPH or AEP for a case, the applicant can no longer request deferred examination. Additionally, after requesting deferred examination, the applicant may withdraw the request for deferred substantive examination. However, once withdrawn, the applicant cannot apply for deferred substantive examination again. The applicant may also change the resumption date for substantive examination, but the new designated date must still be within three years from the filing date of the application.
From the above content, it can be understood that Taiwan invention applicants have various options for accelerated examination, allowing them to flexibly utilize these mechanisms to obtain patent protection as early as possible. Similarly, if an applicant has already requested substantive examination but later wishes to defer examination, a request can still be filed as long as the first examination result/non-final rejection has yet to be issued.
