In view of the growing number of invention patent applications and a lack of Patent Prosecution Highway (PPH) cooperation with foreign patent offices, TIPO has developed its own new set of procedures based on the PPH program to help accelerate the speed of patent examination in Taiwan. An applicant can request for accelerated examination by submitting a copy of the claims and other related documents, when his/her application has been granted under substantial examination by a foreign patent authority. TIPO examiners can send out a notification of the examination result faster with the documents the applicant provided.

Applicants requesting for accelerated examination need to provide all required documents and meet the following two criteria: the applicant has been notified by TIPO that the examination or re-examination of the invention patent application will begin shortly, and the same application has been granted under substantial examination by a foreign patent authority.

¡§The same application¡¨ here means the subject-matter of the claims in the TIPO application must be directly and unambiguously derivable from the disclosure of the invention in the granted foreign application. For example, the same application can belong to the same patent family as the basic application claiming priority to the application with TIPO. However, claiming priority to the foreign application is not necessary. An application filed with any foreign patent authorities can be accepted. At TIPO, most of our foreign applications come from JPO, USPTO, and EPO. But under AEP, there is no limitation on foreign patent authorities.

Although in PPH, most patent offices only accept applications that have not been examined (i.e. the respective patent office has not sent out a notice to applicants), there are no such limitations under TIPO's new accelerated examination program: all invention patent applications currently under substantial examination may request for the accelerated examination. If the applicant has narrowed the scope of the claims according to the office action by TIPO, then the applicant should refrain from using the granted foreign patent that has a broader scope of the claims than the one amended to request for accelerated examination.

Required documents:
(a) Request for accelerated examination form;
(b) (1) A copy of the claims of the patent issued by a foreign patent authority (translated Chinese copy required), or (2) a copy of the notice of allowance from a foreign patent authority and the to-be-granted claims (translated Chinese copy required);
(c) An explanation on the differences in claims between the patent application submitted to TIPO and the translated copy mentioned in (b); if there is no difference between the two, the applicant should mark the box ¡§no differences¡¨.

All items mentioned in (a) and (b) are required documents; (c) is also a required document, but if there are no differences except literal translation in claims, then an explanation is not necessary. Other helpful documents might also be submitted (e.g.: search report, copies of the office actions (which are relevant to patentability) from the foreign patent office (including a summary written in Chinese), copies of references cited by the foreign patent examiner, etc.).

In general, TIPO will send out a comment or a written decision within six months from the time all necessary documents are submitted. However, the actual amount of time it would take to complete an examination would depend on the technical field the application involves. Applicants can download and complete the ¡§Request for Accelerated Examination Form¡¨, located in the ¡§Patent Applications FAQ¡¨ section of the TIPO website, before submitting the application (available in Chinese only). The accelerated examination program is scheduled for an initial trial period of one year and may be continued pending a future review.