Re: Accelerated Examination Program (AEP) in Taiwan— Formal Implementation

February 2, 2010

TO: TIPLO’s Clients and Associates

Re: Accelerated Examination Program (AEP) in Taiwan
— Formal Implementation

Dear Sirs,

We are pleased to advise you that after a one-year trial of Accelerated Examination Program (AEP), the Taiwan Intellectual Property Office (the IPO) has decided to formalize such a program and extended the condition of seeking accelerated patent examination as from January 1, 2010. 

According to the new program, an applicant may apply for accelerated examination for the invention patent applications that are under examination at the primary examination or re-examination stage and meet either one of the following conditions:

1. Where any corresponding foreign patent application has been substantively examined and allowed.

   【Required documents】
(a) Application form for accelerated patent examination;
(b) The set of claims allowed and published by foreign patent office (with the Chinese translation thereof); or a notice of allowance rendered by foreign patent office together with the claims that are going to be published (with the Chinese translation of the claims);
(c) All examination opinions and search reports issued by foreign patent office during patent prosecution.  If said documents are in a language other than Chinese or English, a brief description thereof in Chinese should be provided;
(d) An explanation of the differences between the Chinese translation of the allowed claims of the corresponding foreign application and the claims of the Taiwanese application (if no differences exist, this document can be omitted);
(e) A copy of the prior art references that are non-patent documents cited in the aforesaid document (c) against the novelty or inventive step of the corresponding foreign application.  A copy of the prior art references that are patent documents is not needed.

* In principle, after the documents required for said request are filed, the applicant may expect to receive the IPO’s examination result within 6 months, yet it still will depend on the invention’s technical field.

2. Where any corresponding foreign patent application has not been allowed yet but has already received the examination opinions or search report issued by the USPTO, JPO or EPO.  <New!>
  
    【Required documents】
(a) Application form for accelerated patent examination;
(b) The set of claims on which the USPTO, JPO or EPO made the examination opinions (with the Chinese translation thereof);
(c) The examination opinions and search reports issued by the USPTO, JPO or EPO during the patent prosecution. If said documents are in a language other than English, a brief description thereof in Chinese should be provided;
(d) An explanation of the differences between the Chinese translation of the aforesaid document (b) and the claims of the Taiwanese application (if no differences exist, this document can be omitted);
(e) If in the aforesaid document (c) a prior art reference is cited against the novelty or inventive step of the claimed invention of the corresponding foreign application, the applicant should provide a statement in which the reasons why the claimed invention of the subject patent application is considered patentable should be described;
(f) If the prior art references cited in the aforesaid document (e) include non-patent documents, a copy of the non-patent documents should be provided. A copy of the prior art references that are patent documents is not needed.

* If there is no differences exist between the claims of the corresponding foreign application and the Taiwanese application, after the documents required for said request are filed, the IPO’s examination result will be issued within 6 months; otherwise, the IPO’s examination result will be issued within 9 months, yet it still will depend on the invention’s technical field.

3. If an invention application is required for the applicant to practice for commercial purpose.  <New!>

   【Required documents】
(a) Application form for accelerated patent examination;
(b) Any related evidences, e.g. the discussing patent license, advertising catalogues of the products etc., proving the fact that the invention is required for the applicant to practice for commercial purpose.

* In principle, after the documents required for said request are filed, the applicant may expect to receive the IPO’s examination result within 9 months, yet it still will depend on the invention’s technical field.

We hope the above information is helpful and should you have any further questions, please let us know.

With best regards,

Copyright©2010 TIPLO Attorneys-at-Law
 
Taiwan International Patent & Law Office
7th Floor, We Sheng Building,
No.125, Nanking East Road, Sec. 2,
P.O.BOX 39-243, Taipei 10409, TAIWAN
Tel：886-2-2507-2811　Fax：886-2-2508-3711‧2506-6971
E-mail: tiplo@tiplo.com.tw　https://www.tiplo.com.tw