New invention patent examination process in place

New regulations for combined interviews for related invention patent applications promulgated by the Taiwan Intellectual Property Office (TIPO) of the Ministry of Economic Affairs came into force on 1st October 2012. The new regulations are intended to address the substantial application backlog and to expedite the examination of patent applications.

In June 2011 TIPO invited the top 20 invention patent applicants in Taiwan (eg, Hon Hai, AU Optronics and HTC) to participate in a trial operation of the joint interview system, which was primarily applied in the fields of semiconductors, display panels, touch controls and other key technologies. During this trial, TIPO determined that the average time needed for patent examination was reduced from 44 months (the previous timeframe) to 38 months. As a result, the examination of applications for patents of key technologies or the results of research and development, which had faced a backlog for some time, has been substantially expedited. The trial also helped participating company applicants to establish complete patent deployments with key techniques. In light of the success of this trial, TIPO will expand the fields to which the new interview process will apply and has promulgated regulations to deal with the backlog.

In accordance with the regulations, the requirements for applying for the combined interview for related invention patent applications are as follows:

• Invention patent applications must be filed by a single applicant.
• Multiple invention patents must relate to one product or industrial technology.
• Substantive examination must be requested for invention patent applications and the applications must be made available through the early publication system.
• The first invention patent application cannot claim domestic priority.
• Multiple invention patents must apply for the new interview process before the first official action is received. Thus, the new system applies only to the preliminary examination of applications (ie, the new interview process is not available in the re-examination process).
• There must be no more than 10 multiple invention patent applications.

As part of its goal to expedite patent proceedings, TIPO launched a one-year Patent Prosecution Highway (PPH) pilot programme with the US Patent and Trademark Office from 1st September 2011, and a two-year PPH pilot programme with the Japanese Patent Office from 1st May 2012. The PPH is a set of initiatives designed to provide expedited patent examination procedures through information sharing between patent offices, allowing each participating patent office to benefit from the work previously performed by other patent offices, with the goal of reducing the heavy examination workload of patent offices and improving the quality of patent examination generally.

With the enforcement of the new interview process, it should be possible to expedite the examination of patent applications without sacrificing quality. The new system will favour companies that effectively and efficiently establish complete patent deployment regimes with key techniques.