Taiwan amends the draft to delay examination of invention patents

The Taiwan Intellectual Property Office (TIPO) provides applicants with flexible examination procedures to align patent applications with their product commercialization schedule or the examination speed of corresponding foreign applications. In order to slow down the examination speed, the delayed examination program for invention patent applications was introduced in March 2015. After years of experience, TIPO has drafted a revised version of the program to fully meet the needs of current users. The draft allows applicants more time to request a delayed examination in order to effectively suspend the examination process. These revisions also include the reorganization of paragraphs in patent applications and the renumbering of claims.

A. Time to file a request for delayed review (Article 2)

• A request for deferred examination may be filed at any stage other than the first examination. For invention patent applications, an applicant may file a request for deferred examination at any time between the start of substantive examination and the first service of the patent office action, which is either (1) the first examination stage or (2) the reexamination stage.
• The draft amendment removes the current restrictions that prevent the suspension of a request for a spin-off application. However, the examination process cannot be suspended if (1) the substantive examination is conducted by a third party, or (2) the applicant has applied for accelerated patent application (AEP) or Patent Prosecution Highway (PPH) for the same application.

B. Rules of Procedure (Article 3, 5-6)

• In addition to providing the application number, applicant name and agency details, the applicant must also specify the date the review will be reinstated. The reinstatement date must be within three years of the application date.
• At the end of the suspension period, the application will automatically be placed in chronological order for examination in the same year. The statutory timetable for publication of patent applications is not affected by the delayed examination.

C. Withdrawal and rescheduling (Article 4)

• The applicant may also withdraw the request for deferred examination, but may not submit another request for deferred examination for a withdrawn request for deferred examination.
• The applicant may change the date of reinstatement, but the readjustment date must be within 3 years of the application date.