Accelerated Examination Procedures for Patent Applications in Taiwan, China - PPH/TW-SUPA/AEP/Priority Examination

In the patent examination process in Taiwan, China, there are several ways to request accelerated examination in order to obtain patent rights more quickly. Specifically, there are several ways to request accelerated examination:

Patent Prosecution Highway (PPH)

• If the patent application has received a notice of entry for investigation issued by TIPO, and TIPO has not yet issued the first examination action, in this case, the applicant can file a PPH request and submit the examination action issued by the foreign patent office, as well as a copy of the examination action of the corresponding application and its references, and a claim correspondence table, etc. The time for TIPO to issue the first examination action for a PPH request is: 5 months
  • Normal PPH: If a patent application is filed with the First Examining Office, and some or all of the claims are granted after substantive examination, the applicant may provide the relevant search report and examination results of the application to TIPO to speed up the examination process.
  • Enhanced PPH (PPH MOTTAINAI): Applicable to some or all of the claims of a patent application. After the patent office of Japan, Spain, South Korea, Poland and Canada has conducted substantive examination and obtained authorization, no matter the patent was first filed at TIPO or in other countries, the applicant can submit the search report and examination results and other materials related to the patent application to the subsequent examination office that has not yet examined the case, so as to speed up the examination.
• An applicant cannot apply for both general PPH and enhanced PPH at the same time.

Support for the use of Patent Prosecution Highway (TW-SUPA)

• Based on the cooperation and sharing of examination results among international patent offices, TIPO has launched the PPH "Support Using the PPH Agreement" (TW-Support Using the PPH Agreement) examination operation plan with other countries since September 1, 2011, referred to as the TW-SUPA plan. The time for TIPO to issue the first examination opinion notice for TW-SUPA is: 6 months.
• According to the TW-SUPA scheme, if an applicant uses a Taiwan invention patent application as the Office of First Filing (OFF), and then files a foreign corresponding application with the patent office of a PPH agreement country, and claims that the Taiwan invention patent application is the basis of priority, during the period when the TIPO is about to conduct substantive examination and has not yet issued the first examination opinion, the applicant may file a TW-SUPA accelerated examination request within no more than 6 months from the date of the foreign patent application filing and pay an official fee of NT$4,000 .
• Patent applications must meet the following requirements:
  • 1. Taiwan invention patent applications have a common priority basis with corresponding foreign applications, and the foreign country must be a PPH or PPH MOTTAINAI signatory country
  • 2. A PPH request may be filed no later than 6 months from the filing date of the corresponding foreign application
  • 3. The Taiwan patent application has issued a notice of entering the substantive examination stage, and the first examination opinion notice has not yet been issued
  • 4. Applicable foreign corresponding applications must be invention patent applications from countries that have signed PPH or PPH MOTTAINAI programs with Taiwan.
• Submit documents:
  • 1. Request: The Taiwan patent application number and the country, application number and application date of the foreign corresponding application must be stated.
  • 2. A copy of the examination opinion issued by the foreign patent office on the corresponding application and its cited documents
  • 3. Claim correspondence table
  • 3. Official fee: NT$4,000 per item
• Review process:
  • 1. If all documents are complete, TIPO will issue a notice of examination results within 6 months, including an examination opinion, final notice or examination decision. The actual examination time will depend on the technical field.
  • 2. If the application does not meet the application requirements or the documents are incomplete, TIPO will notify the applicant to make corrections; if the application still does not meet the formal examination requirements after correction, the application will be examined according to the normal procedure.
  • 3. Foreign corresponding applications do not include PCT applications, i.e., applications in the PCT international phase are not included.
  • 4. TW-SUPA request can only be filed with TIPO as the first examining office

Priority Review

• After the invention patent application is published, if it is found that a third party who does not apply for the patent directly copies the product for sale, or provides sales information to the outside world, etc., in this case, the applicant can file a priority examination request and attach a warning letter issued by the applicant, or product information related to the patent content, advertising content, and other materials sufficient to prove that the non-patent applicant has commercial implementation. TIPO will issue the first examination opinion notice within 10 months after the priority examination is passed.
  • The applicant does not need to pay the accelerated examination request fee, but must submit a request for accelerated examination and its relevant supporting documents, including: written notification, advertising catalog or other commercially implemented written materials, etc. For invention patents, it must have entered the substantive examination stage.
  • When an infringement lawsuit is being heard in court, the applicant can submit relevant supporting documents to TIPO for priority review of the case involving the infringement lawsuit.

Accelerated Examination Program (AEP)

• If an invention patent application is to be subject to substantive examination or reexamination by TIPO and the patent application has been published, regardless of whether it has been subject to substantive examination, the applicant may file a request for accelerated examination with TIPO if the following conditions are met, provided that the applicant has received a notice of entry into substantive examination or a notice of reexamination issued by TIPO:
  • Reason 1: A foreign patent application for the same subject has received a foreign patent office authorization approval notice without any official fees. TIPO will issue the first examination opinion notice within 6 months after the applicant has prepared all the relevant documents.
  • Reason 2: Foreign patent applications with the same subject matter have been issued with examination opinions and search reports by USPTO, JPO, and EPO, but have not yet been reviewed and no official fees are charged. If the Taiwan patent application has no difference in claims with the corresponding foreign patent application, TIPO will issue the first examination opinion within 6 months after the relevant documents are prepared; if the claims are different, TIPO will issue the first examination opinion within 9 months after the documents are prepared.
  • Reason 3: If the application is necessary for commercial implementation, the applicant may provide TIPO with product photos, sales models, authorization contracts or industry-university cooperation agreements and other supporting documents. Official fee: NT$4,000. TIPO will issue the first examination opinion notice within 9 months after the applicant has prepared all the documents.
  • Reason 4: Green technology related, you can provide TIPO with a nationally funded research plan, sufficient to prove that the application belongs to green-related technology, or help energy conservation and carbon reduction and other supporting documents, official fee: NT$4,000. TIPO will issue the first examination opinion notice within 9 months after the applicant has prepared all the documents.
• If the foreign corresponding application is claimed to have been substantively examined and authorized by the foreign patent office, or the USPTO, JPO, EPO have issued a search report and examination opinion after examination, TIPO will generally issue the first examination opinion notice in 5-6 months; if it is claimed to be necessary for commercial implementation, or the invention technology is related to green technology, TIPO will generally issue the first examination opinion notice in 7-9 months.