SAINT ISLAND INTELLECTUAL PROPERTY GROUP

Taiwan IP Practice

Examination of Applications and Issuance

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  • 1
    What is the deadline for filing a substantive examination request and how much is the official fee?
    1

    The Applicant must file a substantive examination request within 3 years from the filing date; otherwise the application shall be deemed to be withdrawn. The Applicant can concurrently submit amendments when filing the request.
     

    The basic official examination fee is NT$7,000, an excess claim fee of NT$800 is applied to each claim in excess of 10, and a Chinese specification size fee of NT$500 is applied to each additional 50 pages of the Chinese specification.

  • 2
    Is the deadline for filing the examination request extendable? If the Applicant fails to timely file the request, is there any remedy to revive the application?
    2

    The statutory deadline is not extendable. There is not any legal remedy to revive the application if the examination request is not filed by the deadline.

  • 3
    How and when can the Applicant obtain patents more quickly?
    3

    After the application has entered the examination stage and is being examined, the Applicant can take advantage of the “Accelerated Examination Program (AEP)” or the “Patent Prosecution Highway Program (PPH)” to accelerate examination of his patent application.
     

    To be specific, the Applicant can file an AEP request any time during the prosecution for his application under either of the following two conditions: (1) when a foreign counterpart has been allowed or issued; or (2) when he is planning to commercially practice the claimed invention, e.g. licensing it to others.
     

    On the other hand, before the TIPO issues the first examination opinion, the Applicant can file a PPH request under either of the following two conditions: (1) when his application claims priority to a corresponding US, Japanese, Korean, Spanish, or Polish application; or (2) when his application claims priority from a PCT application designating the US, Japan, Korea, Spain, or Poland. Note that the Applicant will be requested to revise the claims to conform to the allowed claims of the US, Japanese, Korean, Spanish, or Polish counterpart, or to be narrower than said allowed claims.
     

  • 4
    What is the examination procedure in Taiwan?
    4

    Taiwan has a two-stage patent examination system, preliminary examination stage and re-examination stage, and the stages are demarcated by the First Office Action (i.e. a formal rejection).
     

    At each stage, before issuing an Office Action to formally reject an application, the Examiner will send out at least one Official Letter (i.e. tentative rejection) to invite the Applicant to file responsive observations/amendments.
     

    After receipt of an Official Letter, the Applicant has 3 months to respond and can request a 3-month time extension. It is not necessary to indicate any specific grounds for requesting the extension. In other words, the Applicant has at most 6 months to respond to the Official Letter.
     

    On the other hand, after receipt of the First Office Action, the Applicant has 2 months to respond and can obtain a 4-month extension by filing a re-examination request. A further 2-month time extension is obtainable, if necessary. The Applicant is requested to pay applicable re-examination fees so that his application can enter the re-examination stage and be examined by another Examiner from a different perspective.
     

  • 5
    Can the Applicant choose not to respond to an Official Letter?
    5

    Yes. The Applicant can choose not to respond and simply wait for the First Office Action. However, the Applicant will lose a chance to address substantive issues raised by the Examiner and to elicit allowance.

  • 6
    Are annuities/maintenance fees payable during prosecution?
    6

    No. Annual/maintenance fees are payable for issued patents only.

  • 7
    After receipt of the Notice of Allowance, what is the deadline for paying the issue fee and the first annuity? Is the deadline extendable?
    7

    The issue fee and the first annuity must be paid within 3 months from receipt of the Notice of Allowance with no time extension available. After payment, the Letters Patent will issue and the invention will be published in the Official Gazette.

  • 8
    After receipt of the Notice of Allowance, can the Applicant present additional claims?
    8

    No. The Applicant is not allowed to present any additional claims after receipt of the Allowance.
     

    The Applicant is merely allowed to submit a post-grant amendment to (1) delete claims; (2) restrict the scope of claims; (3) correct misstatements and mistranslations; or (4) clarify uncertainties. Such amendment can be conducted only after the Applicant pays the issue fee and the first annuity, and shall not go beyond the disclosure of the specification/claims/drawings as originally filed or substantially broaden or alter the scope of the claims.

*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.