Formosa Transnational - Taiwan
Intellectual property, particularly patents, is one of the most important and valuable assets that a start-up can own. However, it generally takes around one to one-and-a-half years for the Taiwan Intellectual Property Office (TIPO) to grant a patent. As a result, a growing number of agile and innovative start-ups are seeking more effective ways to obtain their own core set of patents.
TIPO has heard – and intends to respond to – the wishes of these companies. Two accelerated programmes are currently utilised in Taiwan: the Patent Prosecution Highway (PPH) and the Accelerated Examination Programme (AEP). TIPO plans to launch a new pilot accelerated programme named the Positive Interview Programme (PIP), which is especially targeted at start-ups. Through this programme, applicants will be able to obtain a patent within four months from the filing of a request to utilise the programme. This is a much quicker examination procedure than the general procedure (about one to one-and-a-half years) and even the AEP (roughly six months).
Who can apply?
Any Taiwanese or foreign start-up that has been established for less than five years can apply to use the PIP. The company will be required to present evidence proving its eligibility.
Programme content and interview procedure
A request to use the PIP can only be filed after receiving an official notice of the substantive examination. When TIPO receives this request, it will automatically provide documentation to the applicant and schedule a face-to-face interview within two weeks. The documentation for the interview includes prior art and the examiner’s opinions, which should make the applicant aware of the examiner’s main issues of concern. This is called the ‘positive interview procedure’ and is an essential part of the PIP, in which the applicant and examiner can directly discuss issues of patentability, such as novelty, inventive step and/or enablement. Most importantly, the examiner may advise the applicant on a proposed allowable scope of claims for reference. If the applicant accepts the proposed scope of claims, the patent application can be expected to be granted within four months.
The following information is also noteworthy:
- Details of the programme are not yet final. However, TIPO plans to make it effective on 1 January 2021.
- If an applicant is not eligible, TIPO will issue a notice to inform the applicant that it cannot utilise the programme and advise that the application be examined according to general procedure.
- Applicants that wish to use the programme must submit a request via the e-filing system – paper filing is not acceptable.
- If there is no reason to negate patentability, TIPO will issue a notice of allowance without arranging for use of the positive interview procedure.
- To reduce examination time, a positive interview will generally be held within two weeks and no later than one month from the date on which the applicant receives the documentation for the interview.
- To ensure complete and effective communication, videoconferencing is not permitted during the pilot programme period.
In summary, the PIP is expected to be another special fast-track programme tailored to start-ups. It is scheduled to be implemented on 1 January 2021 and TIPO is now reviewing and drafting the related rules and guidelines. A draft of the programme is expected to be released in September or October 2020.