Newsletter
Optimization Plan for Telephone Communication and Face-to-Face Interview in 2024
The Intellectual Property Office (IPO) implemented an improvement plan for face-to-face interview in 2017. With reference to the face-to-face interview and telephone interview (or telephone communication) systems and practices in other jurisdictions, including the United States, Europe and Japan, the IPO and the Taiwan Patent Attorneys Association held a meeting at the end of 2023 to consider ways to make communication with patent applicants more convenient and examination practices more efficient. In June 2024, the IPO held a public consultation meeting on the topic of "Patent and Trademark Examination Optimization and Advancement," where the following plans regarding the optimization of telephone communication and face-to-face interview systems were announced:
1. Telephone Communication
l Nature of Telephone Communication
Telephone communication is regarded as a service-oriented communication channel, distinct from face-to-face interview. Telephone communication primarily provides a simple communication mechanism for less complex cases.
Matters that can be addressed through telephone communication include clarification of unclear regulations or examination opinions and discussions on substantive technical content. For more complex cases, a video or in-person interview should be used for discussion.
l Appropriate Disclosure of Examination Opinions and Protection of Applicants' Procedural Rights
During telephone communication, examiners can appropriately disclose their examination opinions. For instance, if minor amendments to the patent specification, claims, or drawings can overcome a rejection, the examiner may disclose his/her opinion so that the applicant may quickly obtain a patent.
For more complex substantive content or cases that need to be discussed with reference to multiple citations or drawings for clarification, examiners may suggest a face-to-face interview.
Additionally, if a new fact or evidence is found that could change the examiner's opinion at a later time, the examiner will issue another examination report to ensure the applicant’s procedural rights are protected.
l Written Records
The IPO’s internal regulations require examiners to keep important matters and key content discussed during the telephone conference in a written record. However, in some cases (for example, when the telephone communication only involves brief clarification, a written record may not be made. If necessary, an applicants can request the examiner to keep a written record.
l Telephone Communication with External Examiners
For cases handled by external examiners, a trial three-way telephone conference involving the applicant, the external examiner, and the IPO’s personnel will be implemented starting September 1, 2024.
2. Face-to-Face Interview
l Collaboration between Applicants and Examiners
Before the face-to-face interview, examiners should thoroughly study the case, prepare relevant materials or documents, and list items to be clarified. If there are matters the applicant needs to prepare beforehand or explain during the interview, the applicant should be informed before the interview. The applicant should specify items to be discussed in the application form.
Issues discussed during the interview can include not only the items listed in the application form but also those already disclosed in the examination report.
l Appropriate Disclosure of Examination Opinions and Protection of Applicants' Procedural Rights
The IPO encourages examiners to actively disclose their examination opinions. In response to questions raised by applicants, examiners may disclose their opinions based on prior art references or patent law regulations, and actively provide suggestions.
Similar to telephone communication, if new facts or evidence that could change the examiner's opinion are found, the examiner will issue another examination report to ensure the applicant’s procedural rights are protected.
l Auxiliary Amendment and Reasons
Applicants are allowed to discuss the feasibility of auxiliary amendment during the interview. Applicants can submit auxiliary amendment and reasons in advance. To avoid complicating the case, only one auxiliary amendment can be submitted.
l Follow-up Matters and Deadlines
If the applicant expresses the need for further response or amendments during the interview, the examiner should briefly record the issues relating to the response and the deadlines in the interview record.
l Video Interview with External Examiners
For cases handled by external examiners, a trial multi-party remote video interview involving the applicant, the external examiner, and the IPO's personnel will be implemented starting September 1, 2024.
Related optimization measures will be published in the Q&A section of the official website of the IPO.