Program for Petitioning to Defer Substantive Examination of Invention Patent Application

Yu-Li Tsai, Patent Attorney

¡½ Bachelor of EE from National Taiwan University

¡½ Master of Telecommunications from National Taiwan University

¡½ IP Master from New Hampshire Law School (Franklin Pierce)

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1.                  Brief Introduction

In consideration of the applicant¡¦s prosecution strategy, patent deployment, and time schedule for patent commercialization, the Taiwan Intellectual Property Office (TIPO) began on April 1, 2015 to accept an applicant¡¦s petition to defer the substantive examination.

2.                  Applicable Scope

1.      Invention patent application.

2.      An invention patent application having one of the following circumstances is inapplicable:

(1) the application has received a notice of examination opinion or has been examined and decided.

(2) the application has been filed with a divisional application therefor.

(3) the application was filed with a petition for substantive examination by a third party.

(4) the application has been filed with a petition for the Accelerated Examination Program (AEP) or Patent Prosecution Highway (PPH).

3.                  Period of Petitioning to Defer

A petition to defer the substantive examination shall be made upon or after the petition for substantive examination, but shall not be later than three years from the filing date.  If the application was claimed with priority, the aforementioned period shall be based on the filing date when the application was filed in this country.

4.                  Procedure of Petition

1.      The application shall submit a written form to file for a petition to defer the substantive examination, and state the following matters:

(1)   Patent application number.

(2)   Applicant¡¦s name.

(3)   If an agent was appointed, the name and firm of the agent.

(4)   The date on which the substantive examination shall be resumed.

2.      Fee: Free of charge.

5.                  Resumption of Substantive Examination

1.      The applicant shall state a specific date on which the substantive examination shall be resumed, and the specific date is limited to within three years from the petitioning date.

2.      When the applicant states the specific date to resume the substantive examination, s/he shall recite the specific date, such as if ¡§resume the substantive examination on June 1, 2016¡¨ and s/he cannot merely state ¡§resume the substantive examination two years after the petitioning date, ¡§suspend the substantive examination for five months¡¨, etc.

3.      When the date to resume the substantive examination arrives, the application will be added to the queue of applications filed in the same year and will be examined in this order.

6.                  Precautions

1.      The petition to defer the substantive examination will not affect the publication date.

2.      The applicant can withdraw the petition to defer the substantive examination, but once the applicant withdraws the petition, s/he cannot petition again.

3.      After the applicant petitions to defer the substantive examination, s/he can change the date on which the substantive examination shall be resumed, but the date cannot surpass the limitation stipulated in paragraph V. 1 above.

7.                  Conclusion.

The program for petitioning to defer a substantive examination for an invention patent application does provide more flexibility for the applicant¡¦s prosecution strategy, patent deployment, and time schedule for patent commercialization, because the applicant has can have more time within the three-year period to consider whether the invention in the application is valuable to be further prosecuted with potential costs to respond to office actions and obtain protection for a patent with costs for issuance and maintenance fees.

However, another, and perhaps be more preferable, approach is that the applicant does not request substantive examination upon filing, because under Article 38 of the Taiwan Patent Act ¡§[a] request to the dedicated authority for substantive examination of a patent application for an invention may be made by any person within three (3) years after the filing date of the patent application.¡¨  In this way, the applicant can not only freely decide when the application shall be put into the queue for substantive examination within the 3-year period but can even delay the costs for requesting substantive examination, where the official fee is NT$ 7,000 (~US$ 230).  The only risk of adopting this approach might be that the patent agency in this country, for some reason of mismanagement, fails to timely petition the request for substantive examination within the three-year period, although the possibility of this negative circumstance is very low.

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