Taiwan’s Program for Delayed Examination of Invention Patents Revised
The Taiwan IP Office offers applicants the flexibility to align patent prosecution with their product commercialization timelines or the examination pace of corresponding foreign applications. In order to enable the slowing down of the examination, the Invention Patent Application Delayed Examination Program was introduced in March 2015. Following extensive feedback over the years, the TIPO has drafted revisions to the Program to sufficiently meet the needs of current users. Generally speaking, the draft allows applicants more time to request an examination delay, effectively pausing the examination process. These revisions also include the reorganization of paragraphs and renumbering of Articles in the Program. Below is a summary of the key points.
A. Eligible Timing (Article 2)
A request to delay examination can be made at stages other than the first examination. For an invention patent application, the applicant may request the examiner to pause the examination at any point from the start of the substantive examination until the serving of the first Office action, when it is at either (1) the first examination or (2) the re-examination stage.
The draft removes the current restriction preventing applications which has spun off divisional application(s) from being paused.
However, some restrictions remain. The examination cannot be paused if (1) the substantive examination is made by a third party or (2) the applicant has requested for acceleration (AEP) or the Patent Prosecution Highway (PPH) for the same application.
B. Procedural Rules (Articles 3, 5 and 6)
In addition to providing the application number, applicant name and representative details, the applicant must also specify the date on which the examination should resume. The resumption date must be within three years of the filing date.
A note that there is no official fee for requesting a delay has been removed, since it is unnecessary to specify such.
At the end of the pause term, the application will automatically be placed chronologically in the examination sequence for the same year. The draft also emphasizes that the statutorily scheduled timeline for an application’s publication is not affected by the examination pause.[1]
C. Withdrawal and Rescheduling (Article 4)
The applicant may withdraw a delay request but cannot request another delay for the same application if a previous request was made and then withdrawn.
The applicant may change the examination resumption date, but the newly rescheduled date must still fall within the three-year period from filing.
D. Miscellaneous (Title and Article 1)
The official title in Chinese referring the type of this legal document that outlines the Program is renamed to Directives from a Plan. Article 1 has been rephrased in order to emphasize the Program's purpose of delaying an examination.
[1] … [T]he TIPO shall lay open the patent application for invention eighteen (18) months since its filing (or priority, if any), Article 37(1) of the Patent Act