Following the Patent Prosecution Highway (PPH) Pilot program with the United States Patent and Trademark Office, TIPO will begin a similar pilot program with the Japan Patent Office (JPO) on May 1. This is a milestone in patent cooperation and exchange
between Taiwan and Japan since the signing of the Arrangement for the Mutual Cooperation on the Liberalization, Promotion and Protection of Investment and the establishment of the Taiwan- Japan Industrial Collaboration Promotion Office at the Ministry of Economic Affairs.
The Association of East Asian Relations and Interchange Association Japan signed a memorandum on PPH cooperation on April 11. This PPH Pilot Program will allow TIPO and JPO to mutually use search and examination results to speed up patent examination
process and enhance examination quality.
Taiwan and Japan have had a long history of close trading relation; patent applications from Japan outnumber other foreign applications filed at TIPO. Last year, applications from Japan topped at 13,366 cases, especially with respect to invention patent, a record
high of 11,833 cases were filed. This marks an 18.5% increase from 2010, which closed at 9,984 cases. JPO also receives approximately 3000 cases of patent applications from Taiwan each year. With this amount of patents filed between both offices, this PPH Pilot program would give applicants of both countries an option to expedited examination. As most patent applications filed between both countries are concentrated in the areas of electronics, heavy industry, chemical industry and pharmaceutical products, applicants within these categories would also benefit from the program as well.
Under this pilot program, applicant who has filed for the first time his patent application with the JPO (office of first filing) and later filed with TIPO claiming priority to the JPO application may submit a request for accelerated examination with TIPO, if one or more
of the claims has been determined patentable by JPO. This procedure also applies to patent application that has been filed for the first time with TIPO (office of first filing) and claimed priority rights with JPO. As long as one or more of the claims has been determined patentable by TIPO, the applicant may request accelerated examination with JPO.
Under the current Accelerated Examination Program (AEP), applicant whose patent application has been granted by the JPO or has received an office action and search report from the JPO may request for accelerated examination with TIPO. This PPH Pilot
Program would allow for even faster examination process, since PPH requires that the scope of claims has to be the same or smaller as that from the office of first filing, and subsequent amendment to the claims also has to meet this requirement. As requirements for PPH are stricter than those of AEP, it is more economical in terms of examination costs and processing time; average processing time under PPH is 1.1 months, whereas under the AEP is 2.5 months.
Furthermore, in response to increasing demands that after having been granted patent rights under accelerated examination at TIPO, request for accelerated examination with other offices that have PPH agreement with TIPO (e.g., USPTO, JPO) should also be an option, TW-SUPA is proposed. Under the TW-SUPA program, a Taiwan application that is later filed with JPO may request for out of turn examination and receive an office action within six months. After the patent application is granted by TIPO, the applicant may further request that his application be examined under PPH with the JPO.
Request form and other related information may be obtained from TIPO’s website at
www.tipo.gov.tw/pph and JPO’s website at
http://www.jpo.go.jp/cgi/link.cgi?url=/torikumi/t_torikumi/patent_highway.htm.
(Source: TIPO 2012-05-01)
ESSEN Patent & Trademark Office
Beijing | Shanghai | Suzhou | Taipei | Kaohsiung
TEL: 886-7-5565688 ext. 18
FAX: 886-7-5565675
Web: www.essenptl.com
