AMENDMENT OF THE IMPLEMENTATION PLAN FOR EXPEDITING EXAMINATION OF INVENTION PATENT APPLICATIONS

01/01/2010

---

On 7 December 2009, the Intellectual Property Office (IPO) announced the amendment of the Implementation Plan for Expediting Examination of Invention Patent Applications (Implementation Plan), which took effect on 1 January 2010. The contents of the amended Implementation Plan are as follows:
Amendment of the Implementation Plan
After the IPO issues a notice confirming the commencement of the substantive examination or the reexamination of an invention patent application, regardless of whether the examination or reexamination has been conducted, an applicant may apply for expedited examination or reexamination (collectively, examination) of his or her invention patent application by submitting relevant documents on the basis of any of the three grounds stated in the Implementation Plan.
The grounds for seeking expedited examination and other information concerned are as follows:
l	Where a corresponding foreign patent application has been allowed through substantive examination (Ground 1)
	The so-called "corresponding foreign patent application" refers to one that belongs to the same family as the basic application based on which priority claim is made for the said Taiwan invention patent application, or a corresponding foreign patent application which is not claimed as a priority application for the Taiwan patent application. The criteria of judging a qualified corresponding foreign patent application is whether the invention covered in the Taiwan patent claims has been disclosed in the specification; or drawings of the so-called corresponding foreign patent application.
	When seeking expedited examination on the basis of Ground 1, the applicant shall submit all the examination notifications and search reports, if any, issued on the corresponding foreign patent application. For applying for expedited examination, the following documents must be submitted to the IPO:
	1.	A written application for expedited examination
	2.	A copy of the claims allowed and published by the foreign patent office (including the Chinese translation of the claims), or a copy of the allowance notice along with issued by the foreign patent office with the claims to be published (including the Chinese translation of the claims).
	3.	Copies of the examination notifications and search reports issued by the foreign patent office (including a brief explanation in Chinese for these notifications and search reports if they are not in Chinese or English).
	4.	Where the claims of the ROC (Taiwan) patent application are different from the allowed claims of the corresponding foreign application, a written explanation regarding such difference(s).
	5.	A copy of any non-patent prior art reference cited in documents listed in Item (c) above, on the basis of which the novelty or inventive step of the corresponding foreign patent application is challenged.
	Documents listed in Items (a) - (c) are needed to support an application for expedited examination. The applicant may simultaneously submit other documents which he (she) deems helpful for expediting the examination and arguments. If there is any cited prior art to negate the novelty or inventive step of the patent application, the applicant may provide explanation in support of the patentability of the patent application. However, if the IPO has issued examination notifications and asked the applicant to narrow the scope of claim(s), and if the applicant has narrowed the claim scope, the applicant shall not rely on the allowed and broader foreign claims to seek expedited examination.
	In principle, the IPO will issue a notification of examination (including an office action or a decision/reexamination decision) within 6 months from the date of the applicant's submission of all the required documents. However, the actual time for the IPO to issue a notification of examination will depend on the technical field of invention concerned.
l	Where an office action and search report have been issued on a corresponding foreign patent application by the USPTO, JPO or EPO, but the examination has not been concluded (Ground 2)
	When applying for expedited examination on the basis of Ground 2, the applicant must submit at least the first office action and the search report issued before the issuance of the office action (including the search report issued by the EPO on its own initiative or the search reports issued by the three searching authorities under the PCT).
	When applying for expedited examination on the basis of Ground 2, the documents needed include:
	1.	A written application for expedited examination.
	2.	The claim(s) on the basis of which the office action is issued by the USPTO, JPO or EPO (including the Chinese translation of the claims).
	3.	Copies of the office action and search report issued by the USPTO, JPO or EPO (including a brief explanation in Chinese for these notifications and search reports, if they are not in English).
	4.	Where the claims of the ROC (Taiwan) patent application are different from the claims of the corresponding foreign application, a written explanation regarding such difference(s).
	5.	Where there is any prior art reference cited in documents listed in Item (c) above, on the basis of which the novelty or inventive step of the corresponding foreign patent application is challenged, the applicant must explain why the ROC (Taiwan) patent application is patentable. If the prior art reference stated above is a non-patent prior art reference, a copy of such reference must be submitted.
	The documents listed in Items (a) through (c) must be submitted. The applicant may simultaneously submit other document(s) which he (she) deems helpful for expediting the examination, such as responses filed with the foreign patent office, the second or further office actions etc.
	For an expedited examination request filed on the basis of Ground 2, the time period for the IPO to issue examination notification will depend on the different situation. If the claims of the foreign patent application are the same as those of the Taiwan patent application, the IPO will issue the notification within 6 months from the date on which the applicant submits all the required documents. If the claims of the foreign patent application are different from those of the Taiwan patent application, the IPO will issue the notification within 9 months from the date on which the applicant submits all the required documents. However, the actual time for the IPO to issue a notification of examination under either of situations will depend on the technical field of the invention concerned.
l	Where there is a need to make commercial practice (Ground 3)
	If there is a need to make commercial practice based on the Taiwan patent application, the applicant may apply for expedited examination in an attempt to clarify the patentability of his (her) patent application as early as possible. The documents needed for such request include a written application and other evidentiary document(s) proving the need for making commercial practice, such as a copy of the licensing agreement under negotiation, advertisements, catalogues etc. In principle, the IPO will issue a notification of examination within 9 months from the date when the applicant submits all the required documents. However, the actual time for the IPO to issue a notification of examination will depend on the technical field of the invention concerned.