2016-03-21
Years ago, Taiwan Intellectual Property Office (hereinafter referred to as the TIPO) and Japan Patent Office (hereinafter referred to as the JPO) jointly launched the Taiwan-Japan Patent Prosecution Highway (PPH) Pilot Program 1and Program of Patent-related Priority Document Exchange between Taiwan and Japan (hereinafter referred to as PDX) 2. The two programs render patent application document filing convenient and lessen the work to be done by the TIPO and the JPO in patent examination. The two programs are described as follows:
A.Taiwan-Japan Patent Prosecution Highway(PPH) Pilot Program
The Taiwan-Japan Patent Prosecution Highway (PPH) Pilot Program enables an applicant, who filed a patent application previously and the claims thereof were allowed in part or in whole by a substantial patent examination conducted by a patent authority, including the allowable claim(s) specified in any office action pertaining to the patent application, to provide related data to the office of second filing (OSF), that is, the current patent authority, so as for the current patent authority to gain access to a patent search report and examination result produced by the office of first filing (OFF), that is, the previous patent authority, thereby speeding up the examination of the applicant’s current patent application.
Duration of Enforcement
The Taiwan-Japan Patent Prosecution Highway (PPH) Pilot Program began on May 1, 2012 and ended at April 30, 2014. Afterward, the TIPO and the JPO jointly assessed whether the PPHPilot Program is to continue.
Application Requirements
Assuming an applicant filed a previous patent application with the JPO and is filing a current patent application with the TIPO, the current patent application must meet the four requirements below in order to claim priority to the previous patent application.
1. Eligibility
2. A patent application claims priority to the previous patent application under Taiwan’s Patent Act; or
3. A patent application is filed by PCT procedure under Taiwan’s Patent Act to claim priority to the previous patent application, and the PCT application has never claimed priority right before.
B.The PPH Pilot Program is restricted to invention patent applications.
The previous patent application, to which the current patent application claims priority, has one or more claims allowed by the JPO.
C. At the point in time when the current patent application is filed by the PPH Pilot Program and when subsequent amendment is made to the current patent application, all the claims of the current patent application must sufficiently match the one or more claimed allowed by the JPO.
The criterion “sufficiently match” refers to the requirement that all the claims of the current patent application must not be broader than that of the previous patent application.
D. The TIPO has informed the applicant that the current patent application is going to undergo a substantial examination and has not yet received the first office action.
Furthermore, the current patent application must be published before it can be filed by the PPH Pilot Program. Alternatively, the current patent application may be filed by the PPH Pilot Program, provided that the current patent application is filed together with an early publication application. It is because doing so not only embodies the spirit of patent application publication but also prevents an applicant from prying into the probability of allowance by means of the PPH Pilot Program and revoking the patent application before its publication.
Duration of Examination
Statistics compiled by the TIPO3reveals that, after an applicant has filed a patent application by the PPH Pilot Program and with the required supporting documents, the PPH-based examination procedure of the patent application takes four months on average to run its course. On the contrary, non-PPH-based examination procedure of patent applications takes 43 months on average. Hence, the PPH Pilot Program speeds up patent examination effectively.
Advantages
The PPH Pilot Program not only enables applicants to take out patents quickly but also enables the current patent authority to access the previous patent authority’s patent search report and examination result, thereby speeding up the examination of the applicant’s current patent application.
Program of Patent-related Priority Document Exchange (PDX) between Taiwan and Japan
The PDX program applies to two scenarios. In one scenario, an applicant files an invention or utility model patent application with the TIPO, claiming priority to an invention or utility model patent application previously filed with the JPO by the applicant. In the other scenario, an applicant files an invention or utility model patent application with the JPO, claiming priority to an invention or utility model patent application previously filed with the TIPO by the applicant. In both scenarios, the applicant files the priority document in electronic format instead of paper format.
Term
The PDX program began on December 2, 2013.
Application Requirements
1. The previous patent application (to which priority is claimed) must be either an invention patent application or a utility model patent application.
2. The current patent application must be either an invention patent application or a utility model patent application.
3. The applicant applies for and receives an access code from the office of first filing (OFF), that is, the previous patent authority, and then submits the access code to the office of second filing (OSF), that is, the current patent authority within 16 months from the priority date. In case of more than one first filing applications, the applicant shall submit the access code within 16 months from the earliest priority date.
Processing Time
After receiving an access code application from the applicant, the previous patent authority issues the access code to the applicant in 20 business days. After receiving the access code application submitted by the applicant, the current patent authority retrieves/accesses the electronic priority document from the previous patent authority in 15 business days.
Advantage
By replacing paper-based priority documents with electronic priority document, the PDX program not only enables applicants to dispense with the hassles of producing paper-based priority documents but also enables the TIPO and the JPO to conduct Web-based exchange of priority documents, thereby speeding up patent examination.
Conclusion
The PPH Pilot Program enables the office of second filing (OSF) to speed up patent examination. The PDX Program enables the office of second filing (OSF) to retrieve/access priority documents from the office of first filing (OFF) easily and quickly.
References:
1. MOEA/TIPO (2013): PPH, January 15, 2014, visit http://www.tipo.gov.tw/np.asp?ctNode=6713&mp=1
2. MOEA/TIPO(2013): PDX, January 15, 2014, visit http://www.tipo.gov.tw/ct.asp?xItem=494460&CtNode=7628&mp=1
3. MOEA/TIPO (2013): statistics on applications filed by PPH, January 15, 2014, visit http://www.tipo.gov.tw/lp.asp?ctNode=7483&CtUnit=3629&BaseDSD=7&mp=1
