Under Taiwanese Patent law, the examination process for invention patent applications is divided into 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 enters the Pr-Ex stage. If TIPO finds reasons for rejection, it issues an official letter notifying the tentative reasons for objection/rejection (non-final rejection), allowing the applicant to file a response and amendments. If there are no grounds for rejection/rejection, TIPO will issue a notice of allowance of the Pr-Ex stage. If the applicant’s response and amendments fail to dispel the rejection grounds, TIPO will issue a formal office rejection of the Pr-Ex stage to terminate the examination process at Pr-Ex stage. If the applicant is dissatisfied with the final rejection of the Pr-Ex stage, they must file a request for re-examination within two months, providing response and/or amendments along with the payable government fee for the Re-Ex stage. The applications then proceed to the Re-Ex stage and will be examined by examiners who are newly designated and different from those examined in the Pr-Ex stage. The examining procedure at the Re-Ex stage mirrors that at the Pr-Ex stage, where TIPO may send an official letter notifying the tentative reasons for objection/rejection (non-final rejection), allowing the applicant to file a response and amendments. 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/she has no choice but to seek administrative remedies through appeals or administrative litigation (please see the flowchart figure).
As to the examination speed of 2024, the average time for invention applications to receive its first non-final rejection at the Pr-Ex stage is 8.9 months, with the average complete time for examination of approximately 14.4 months. The average time to receive the first non-final rejection of at the Re-Ex stage is 10.1 months, with an average completion time for re-examination of about 13.1 months. For applicants, the demands for obtaining patents may change because of the technique or markets. There are demands for applicants to accelerate or postpone the start point of the examination. In response thereto,Taiwan IPO provides some schemes for accelerating or postponing the examination
I. Accelerating the examination for invention application:
There are three different types of accelerating the examination
(A) Patent Prosecution Highway (PPH)，
Most of the applicants file patent applications in multiple countries. Since search and examination results of said patent applications in one patent office of said multiple countries can be utilized and considered by another one, there is a scheme called Patent Prosecution Highway (PPH), which allows applicants to have their applications accelerated if they have already got 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 reach an examination result, e.g., a notice of allowance, then the applicant can use this as a basis for filing a request for accelerated examination with another such office.
In Taiwan's PPH scheme, there are two types of PPH: normal PPH and PPH Mottainai. While the PPH between Taiwan and the U.S. is of normal PPH, those with Japan, Spain, Korea, Poland, and Canada are all PPH Mottainai. PPH Mottainai scheme relaxes the limitation of nomal PPH which only allows the search and examination results of the Office of First Filing (OFF) to be referred to by the Office of Second Filing (OSF). Instead, under the PPH Mottainai, applicants 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 Mottainai agreement when filing an accelerated examination request with another such office when the search and examination results become available.
The applicants, when requesting PPH, may need to amend the claims of the Taiwan applications since it is the requisite of PPH that the claims in Taiwan must fully correspond to or narrower than the claims allowed in the foreign country that is the basis for the PPH request.
As for the timing of the PPH request, for the cases in the Pr-Ex stage, it should be done after the receipt of a notice from Taiwan IPO that the case enters the Pr-Ex stage and before the issuance of the first examination result, e.g. the first non-final rejection in the Pr-Ex stage.
(B) Accelerated Examination Program (AEP)
Apart from PPH, applicants may request the Accelerated Examination Program (AEP) when the invention application meets one of the following causes.
1: The counterpart application has been approved by a foreign patent authority under substantive examination
2: The EPO, JPO or USPTO has issued an OA during substantive examination but has yet to approve the application’s foreign counterpart
3: The invention application is essential to commercial exploitation
4: Inventions related to green technologies, i.e., the inventions involving: (1) technologies for improving/saving energy and for developing new sources of energy, or vehicles utilitzing new sources of energy; or
AEP request, similar to PPH request, can only be filed after receipt of a notice from Taiwan IPO that the case enters the Pr-Ex stage /the Re-Ex stage. However, since the cause for filing an AEP request includes commercial implementation, applicants are permitted to file AEP requests even after receiving the first non-final rejection of the Pr-Ex stage /the Re-Ex stage. Nevertheless, if the applicants narrow the scope of the claim in response to the non-final rejection, the applicant is not permitted to broaden the scope of the scope thereafter by requesting AEP based on cause 1 with the reason that the claims allowed in the counterpart application are broader than those in Taiwan.
(C) Accelerated Examination Program for the re-examination application (AEP-Re)
Specifically, when filing the reexamination request with grounds and submitting amendments that either (1) delete the claims rejected in the formal rejection of the preliminary stage or (2) simply rewrite dependent claims which no reason for rejection is raised in such formal rejection into independent claims, the applicants may apply for AEP-Re. The amendments mentioned may include renumbering of the claims and adjusting the dependencies of claims, and adding new dependent claims, if necessary.
The AEP-Re request should be submitted only after receiving a notice from TIPO that the case enters the Re-Ex stage. The applicant merely need file such a request with a statement that the amendments meet AEP-Re criteria with no official fees. If TIPO considers that the reexamination cases meet the requirement for AEP-Re, the re-examination 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. However, if TIPO finds that the cases do not meet AEP-Re criteria, the applicants will be notified, and the case will proceed through the normal re-examination process.
II. Deferring examination for invention applications
The applicants, in addition to accelerating the examination/reexamination of inventions application, may request the suspending the examination/reexamination of inventions, if necessary.
The Request for suspending examination in Pr-Ex stage the PPH requestit should be done after the receipt of a notice from Taiwan IPO that the case enters the Pr-Ex stage and before the issuance of the first examination result, e.g. the first non-final rejection in the Pr-Ex stage. Likewise, the Request for suspending re-examination in Re-Ex stage should be done after the application has completed the formality requirements for the re-examination and a notice from Taiwan IPO that the case enters the Re-Ex stage and before the issuance of the first examination result, e.g. the first non-final rejection issued in the Re-Ex stage.
To request deferment of examination, the applicant must designate a date to re-start the examination in the Pr-Ex stage or the reexamination the Re-Ex stage. The date to re-start the examination/reexamination should be no more than three years from the filing date of the application, whether it is in Pr-Ex stage or the Re-Ex stage. However, if a third party has requested examination or if the applicant has already filed a PPH or AEP request for that application, the application cannot request deferment of examination. After requesting deferment of examination, the applicant can withdraw the request, but once withdrawn, it cannot be reapplied for. If the applicants have requested deferment of examination with a designated date earlier than three years from the filing date of the application, they can change the designated date. However, the designated date must still fall within three years of the filing date of the application.
From above information, it is clear that there are various accelerated review options available to applicants of an invention patent application in Taiwan, providing them with flexibility in obtaining patent protection as soon as possible. Similarly, if the applicant has already requested examination and later wishes to defer examination, they can do so as long as the first examination result/non-final rejection has not yet issued.
