In recent years, the Taiwan Intellectual Property Office (TIPO) has been dedicated to accelerating the examination speed of invention patent applications in response to an increasing demand from the applicant for quicker patent protection.
To facilitate the examination process, the TIPO, among others, has introduced a new type of accelerated examination process for re-examination cases; i.e., the Accelerated Examination Procedure for Re-examination (AEP-Re), effective from September 2024.
The patent examination process in Taiwan
Under Taiwanese patent law, the examination process for invention patent applications has two stages:
The preliminary examination stage (the Pr-Ex Stage); and
The re-examination stage (the Re-Ex Stage).
After a request for substantive examination is filed, the application will enter the Pr-Ex Stage. If the TIPO finds any reasons for rejection/objection, it will issue an official letter notifying the applicant of the tentative reasons for rejection/objection (a non-final rejection), allowing them to file a response and amendments. If there are no grounds for rejection/objection, the TIPO will issue a notice of allowance.
Provided that the applicant’s response and amendments fail to dispel the grounds for rejection/objection, the TIPO will issue a formal office rejection to conclude the examination process at the Pr-Ex Stage. If the applicant is dissatisfied with the final rejection, they must file a request for re-examination within two months, providing a response and amendments, along with the payable government fee for re-examination.
The application will then proceed to the Re-Ex Stage and will be examined by a new designated examiner. The examination process at the Re-Ex Stage mirrors that at the Pr-Ex Stage, where the TIPO may issue an official letter notifying the applicant of the tentative reasons for rejection/objection (a non-final rejection), allowing them to file a response and amendments. When amendments of a case at the Re-Ex Stage fully address all the specific rejection reasons raised in the formal office rejection/objection at the Pr-Ex Stage, the case should be reviewed more efficiently, with a higher likelihood of being issued a notice of allowance.
The examination at the Re-Ex Stage concludes with a notice of allowance or a formal office rejection. A formal office rejection at the Re-Ex Stage is final. Should the applicant be dissatisfied with such rejection, they will have no choice but to seek administrative remedies through an appeal or administrative litigation.
According to the data revealed in the 2023 Taiwan Intellectual Property Office Annual Report, the average time to receive a first non-final rejection at the Pr-Ex Stage is 8.9 months, with an average total examination period of about 14.4 months. At the Re-Ex Stage, the average time to receive a first non-final rejection is 10.1 months, with an average total examination period of about 13.1 months.
The Accelerated Examination Procedure for Re-examination
Subsequent to the introduction of the new process, when filing a re-examination request with grounds and amendments that (i) delete the claims rejected in the formal rejection received at the preliminary stage or (ii) simply rewrite dependent claims with no reason for rejection into independent claims, the applicant may apply for the AEP-Re. The amendments may include renumbering of the claims, adjusting the dependency of claims, and adding new dependent claims, if necessary.
The AEP-Re request should be filed after receiving a notice from the TIPO that the case will enter the Re-Ex Stage. The applicant can file such a request merely with a statement that the amendments submitted meet the criteria for the AEP-Re. No official fee is payable. If the TIPO considers that a re-examination case meets the criteria for the AEP-Re, the re-examination process will be accelerated, and a notice of allowance or a non-final rejection of the Re-Ex Stage (if any) will be issued within six months. If, however, the TIPO finds that the case does not meet the criteria, the applicant will be notified, and the case will proceed through the routine re-examination process.
Final thoughts on Taiwan’s Accelerated Examination Procedure for Re-examination
Given that the AEP-Re is newly introduced, how it works remains to be seen. However, given that no official fee is payable and the process for such a request is not complicated, it is worthwhile to consider applying for the AEP-Re for invention patent applications at the Re-Ex Stage to obtain patent protection earlier and more quickly.
