Draft Amendment to the “Program for Requesting Postponement of Substantive Examination of Invention Patent Applications”
In order to assist applicants to develop patent portfolios and commercialize their patents, the Taiwan Intellectual Property Office (TIPO) launched the “Program for Requesting Postponement of Substantive Examination of Invention Patent Applications” (referred to as “the Program” hereinafter) in 2015. To better achieve the objectives, the TIPO recently announced a draft amendment to the Program, which includes the following main points.
- The time limitation for requesting postponement of substantive examination is to be relaxed
According to the current Program, a request for postponement of substantive examination of an invention patent application is not acceptable if an examination report has been served or a decision has been rendered with respect to said application. As a result, where an invention patent application has been rejected and entered the reexamination stage, it is not possible to request postponement of substantive examination for said application. In this regard, the draft amendment provides that postponement of substantive examination can be requested for an invention patent application in reexamination stage before an examination report is served.
- Applications based on which divisional applications have been filed are to be eligible for the Program
The current Program also prescribes that a request for postponement of substantive examination of an invention patent application is not acceptable if a divisional application based on said application has been filed. Based on the draft amendment, the above restriction is to be removed. Hence, postponement of substantive examination is to be applicable to applications based on which divisional applications have been filed.
- Applications for which prioritized examination has been requested are to be ineligible for the Program
Further, the current Program does not apply to applications for which requests under the Accelerated Examination Program (AEP) or Patent Examination Highway (PPH) program have been filed. Considering that the prioritized examination stipulated in Article 40 of the Patent Act is analogous to the accelerated examination under the AEP and PPH, the draft amendment prescribes that postponement of substantive examination is also inapplicable to an invention patent application for which a request for prioritized examination has been filed.
- The Program is to be combined with the “Program for Requesting Postponement of Substantive Examination of Design Patent Applications” and renamed
In addition to the Program, the TIPO launched the “Program for Requesting Postponement of Substantive Examination of Design Patent Applications” in 2018. Since the two programs have the same objectives and similar requirements, they are to be consolidated and renamed as “Operational Directions Governing the Requests for Postponement of Substantive Examination of Invention and Design Patent Applications.”
