The Intellectual Property Office of Taiwan (hereinafter referred to as the “IP Office”) has announced that starting September 1, 2023, it no longer refuses accelerated examination petitions for design applications, among others. The details are briefly described as follows.
In Taiwan, design patent applications require substantive examination, but there was previously no accelerated examination system. Although the IP Office typically issues the first examination opinion notification for design patent applications relatively quickly (approximately within 6 months), applicants might, for commercial reasons, still wish to expedite the examination process.
In an attempt to confront imitation, support new designs, and nurture startups, the IP Office, with reference to practices in countries like the USA, Japan, and Korea, published the “Trial Guidelines for Accelerated Examination of Design Patent Applications.” The trial period is from September 1, 2023 to December 31, 2024. The IP Office will assess, after the trial period expires, the effectiveness of the Guidelines to determine whether to continue or modify it.
According to the Trial Guidelines, a request for accelerated examination must be filed electronically after receiving notification that a preliminary examination has begun, but before receiving the first examination opinion notification. There is no need to pay any official fee.
After filling a petition that meets one of the following three conditions and fulfilling all the formalities, the applicant can expect to receive an examination result within two months.
- The very design has been commercially exploited by a third party—
The applicant must submit evidence proving commercial exploitation by a third party (i.e., someone other than the applicant), along with a description of the exploitation and its start date.
- The design has been recognized by prominent domestic or international awards—
The applicant must submit an award certificate proving that the design has won an award. Currently, only the following awards are recognized by the IP Office:
(1) Taiwan’s Golden Pin Design Award
(2) Germany’s iF Design Award
(3) Germany’s Red Dot Design Award
(4) Japan’s Good Design Award
(5) USA’s International Design Excellence Awards (IDEA).
- The design is owned by a startup—
A company that has been registered according to the Taiwan Company Act or a foreign law for less than eight years from the filing date, or the priority date, if applicable, is qualified to file the petition. A foreign applicant must provide documentation verifying the company's establishment date.
Furthermore, since July 1, 2018, Taiwan has allowed design patent applicants to request a deferred substantive examination. The deferral period is within 1 year from the filing date or the priority date, if applicable. Therefore, a design patent application that is filed close to the end of the priority period can substantially be deferred for half a year only. In contrast, for invention patent applications, regardless of any priority claim, the deferral of substantive examination is calculated from the filing date, without being linked to the priority date. To ensure consistency in the patent system, starting September 1, 2023, for a design patent application that claims priority, the IP Office will adjust the start date of the deferral period from the priority date to the filing date. That is, even though a design patent application that is filed close to the end of the priority period, such application can substantially obtain a deferral period of 1 year.
In conclusion, design patent applicants are able to follow the above-mentioned procedures to either expedite or delay the examination timeline for their design applications in Taiwan. This permits them to adopt more subtle adjustments to their patent and business strategies in response to market changes, achieving a synergistic effect.